All Things Pros focuses exclusively on patent prosecution. Board of Appeals decisions are used to illustrate good – and bad – strategies for handling 102, 103, 101 and 112 rejections. Claim construction is a major focus, because prosecution is usually about the Broadest Reasonable Interpretation of a claim. Coverage also occasionally includes procedural topics such as after-final, RCE, and restriction practice, and infringement topics from district court or Federal Circuit decisions.

Wednesday, October 31, 2012

BPAI reverses obviousness rejection after finding combination was "more than the predictable use of a prior art element according to its established function"

Takeaway: The BPAI reversed an obviousness rejection of a claim to a mail processing system after finding that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." (Ex parte Ryan, Jr., BPAI 2009.)

The application on appeal was directed to a mail processing system. A representative claim on appeal read:

2. A mail piece verification system for processing mail pieces, the mail pieces having associated therewith respective mail piece data, the system comprising:
a data center in operative communication with a plurality of mail processing centers,
the data center including a plurality of account files corresponding to a plurality of postage metering systems;
the data center being adapted to
store reset data in each of the plurality of account files representative of reset activity associated with the plurality of postage metering systems, respectively;
receive respective mail piece data corresponding to the mail pieces from the plurality of mail processing centers;
store empirical data in each of the plurality of account files representative of mailing activity associated with the plurality of postage metering systems, respectively;conduct a forensic accounting analysis of the empirical data and the reset data associated with a selected postage metering system using a previously defined time period over which to conduct the forensic accounting analysis; and download graphic data to the selected postage metering system to be included in the mail piece data of mail pieces subsequently prepared by the selected postage metering system if the forensic accounting analysis reveals that the empirical data is not consistent with the reset data for the selected postage metering system.
(Emphasis added.)

The Examiner rejected claim 2 as obvious over Hunter, Moore, and Connell. The issue on appeal was whether the combination of Hunter and Connell taught the elements emphasized above.

Specifically, in the Final Office Action the Examiner relied on Hunter for the "conduct a forensic accounting analysis" action, for the claimed "if" condition, and for taking an action – further investigation of possible fraud – in response to the claimed "if" condition. Since Hunter's responsive action was not the claimed "download graphic data" action, the Examiner then relied on Connell as teaching the "download graphic data" action in response to detection of fraud. In explaining how and why these features were combined, the Examiner used the following reasoning:

To paraphrase in order to explain the rejection in a more simple manner, Hunter detects potential fraud by keeping track of postage value added to a meter, as well as mail pieces from that meter that pass through the postal system. If the postage having been purchased for a meter differs too much from the amount of postage on mail pieces from that meter that have been mailed, this is an indication of potential postage fraud. When such fraud is detected, Hunter initiates a responsive action to deal with the situation. In Hunter, that responsive action is to initiate an investigation (see Hunter, column 5, lines 31-39).
Of course, claim 1 requires that the responsive action be not an investigation, but a download of graphic data into a meter that gets incorporated onto mail pieces for the purpose of identifying mail pieces originating from suspect meter users. It is necessary to turn to Connell et al. for this portion of the claim limitation.
Connell et al. is a postal security system that also functions in response to possible postal fraud (see Connell et al., column 1, lines 30-52). Connell et al. works by incorporating graphic data onto mail pieces that indicates whether or not the postage on the mail pieces is legitimate. At any given point in time, there is a particular item of graphic data that is designated as indicating that a mail piece's postage is valid. This designated graphic data changes periodically. In order to keep their "designated graphic data" up-to-date so that their mail pieces are indicated as having valid postage, meter users in Connell et al. must occasionally download the latest version of the designated graphic data. Individuals who are not authorized to be metering mail pieces will not have access to up-to-date designated graphic data, and thus will mail mail pieces with out-of-date graphic data that indicate the mail pieces as potentially fraudulent. Therefore, Connell et al. provides the needed disclosure of graphic data on mail pieces that is used to identify potentially fraudulent mail pieces in response to meter fraud concerns.
Since the out-of-date graphic data used by a potentially fraudulent user was at one point up-to-date graphic data that was downloaded validly to that user, the out..:of-date graphic
data in Connell et al. that identifies potentially fraudulent data is disclosed as being downloaded
to user meters.

On appeal, the Applicant did not argue the teachings of the individual references, but instead challenged the manner in which the features were combined. Specifically, the Applicant argued that the trigger for Connell's download action was much different from the trigger for Hunter's further investigation action:

[T]he system in Connell selects one of a plurality of stored indicia images [for download] based solely on the date that the indicia will be printed. ... The date has nothing whatsoever to do with whether or not a forensic accounting analysis reveals that the empirical data is not consistent with the reset data. ... Without using the present claims as a road map, it would not have been obvious to make the multiple, selective modifications needed to arrive at the claimed invention from these references.

In the Answer, the Examiner maintained the rejection and also provided additional explanation.

The use of graphic data to identify postal fraud, as can be seen in the above passages from Connell et al. is a responsive action to the overall problem of postage indicium fraud. While the responsive action in Connell et al. is nota responsive action in the same specific and immediate way that the responsive action in Hunter is, the responsive action in Connell et al. is still a responsive action.
(Emphasis added.)

Also, while the Answer continued to rely on a specific motivation in Connell, the Answer brought in one of the KSR rationales,
asserting that the claims “only unite old elements with no change in
their respective functions and which yield a predictable result.”

The Board reversed the obviousness rejection. Noting the Examiner's reliance on the "predictable results" rationale from KSR, the Board instead found that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." The Board explained this statement as follows:

The Examiner states, “. . . the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is . . ..” Answer 26. We agree. While the overall invention in Connell may be directed to the prevention of postage indicia fraud, Connell describes the “responsive action” (i.e. the downloading of an address of a newly authorized indicia) relied upon by the Examiner functions to detect the postage indium fraud. The Examiner’s “responsive action” of Connell is not a response to a detection of an occurrence of postage indicia fraud but is a means that functions to detect an occurrence of the fraud. Connell’s “responsive action” performs the same function as the Hunter’s description of comparing purchased postage with used postage and not the further investigation of Hunter, as the Examiner seems to assert (see Answer 23). Further, Connell’s “responsive action” performs the same function as the claimed forensic analysis and not the claimed downloading of graphic data. ... Therefore, we find that the Appellant has shown the Examiner erred in rejecting claim 2.

My two cents: First, I give credit to the Examiner for providing a detailed explanation of the rejection. Second, I'm glad to see a successful attack on the common "predictable results" rationale. However, I think this fact pattern better fits a proposed-combination-does-not-teach-the-claim argument. That said, I think I figured out how to make the fact pattern fit the predictable results rationale. (Or, more precisely, the UNpredictable results rationale.)

The way I see it, the Examiner's combination rejection takes the form

Claim includes action A (forensic analysis), result B (data not consistent) of action A, and action C (downloading graphic data) in response to result B.

Hunter teaches action A, result B of action A, and action C' (initiate fraud investigation) in response to result B.

Connell teaches action C in response to result B.

Combination results in action A, result B of action A, and action C.

The Board disagreed with the Examiner's reading of the reference. That is, the Board found that Connell's downloading graphics data was not properly understood as action C in response to result B, but was instead action D (fraud detection). Thus, the Board found that the Examiner's combination did not produce the claim, which required action A, result B of action A, and action C in response to result B.

That's why I see the Board's reasoning as a natural fit for a proposed-combination-does-not-teach-the-claims argument, rather than an unpredictable-results argument.

But after thinking about this decision for a while, I think I see how to map this very same reasoning to the lack-of-predictable-results rationale. You could say that the predictable combination of Hunter and Connell is A, B as a result of A, C' in response to B, and D. But the claims require A, B as a result of A, and C in response to B. So the claim is not a predictable result of the combination, and the Examiner didn't make a prima facie case of obviousness.

As a side note, you'll recall that the Examiner mentioned the predictable results rationale in the Answer, but also used an explicit motivation to combine from the secondary reference. The Board didn't address this alternative rationale.

Finally, I note that the Applicant also used a hindsight argument during prosecution and in the Appeal Brief, and the Board also found hindsight. Personally, I find hindsight to be a particularly UNhelpful way of viewing obviousness. Hindsight is the conclusion reached when the prima facie case isn't made ... the Examiner must have used hindsight because he hasn't made a prima facie case. Hindsight is not itself a standalone argument against obviousness.

141 comments:

This is incorrect. It may not be the most convincing argument, especially to a bull-headed examiner, but it is nevertheless a standalone argument against combining references under 2145(A). This argument usually falls on deaf ears with an examiner but must, if the fact pattern allows, be brought up during examination. It is more likely to succeeded on appeal than before an examiner.

In the context of a multi-reference 103, any time I see an examiner contorting limitations of a claim using broadest reasonable interpretation grounds I argue improper hindsight reasoning. I think it's fairly obvious (no pun) to make this point when an examiner is trying to shoehorn a read of a claim into their proposed combination.

Instances where hindsight reasoning are occurring are easy to distinguish from legitimate 103 rejections that rely on a straightforward elemental analysis with direct citations to the relevant portions of the art and a simple and coherent reason to combine. I have always found that the more convoluted the rejection, the more hindsight reasoning being applied.

Finally, this case emphasizes a requirement for rejections under 103 that can be used to the Applicant's advantage. The examiner MUST provide sufficient rationale for the asserted combination. It surprises me how many examiners fail to set forth their rationale clearly and how many prosecutors fail to press them on this point.

If I am unclear as to the rationale being used I lay out their options in a form paragraph and have them select their rationale from the list. We are shadow boxing until the examiner has formally selected their reason to combine.

To prevent the use of hindsight based on the invention to defeat patentability of the invention, this court requires the examiner to show a motivation to combine the references that create the case of obviousness. In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.

This court has identified three possible sources for a motivation to combine references: the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art. In this case, the Board relied upon none of these. Rather, just as it relied on the high level of skill in the art to overcome the differences between the claimed invention and the selected elements in the references, it relied upon the high level of skill in the art to provide the necessary motivation. The Board did not, however, explain what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination. Instead, the Board merely invoked the high level of skill in the field of art. If such a rote invocation could suffice to supply a motivation to combine, the more sophisticated scientific fields would rarely, if ever, experience a patentable technical advance. Instead, in complex scientific fields, the Board could routinely identify the prior art elements in an application, invoke the lofty level of skill, and rest its case for rejection. To counter this potential weakness in the obviousness construct, the suggestion to combine requirement stands as a critical safeguard against hindsight analysis and rote application of the legal test for obviousness.

Because the Board did not explain the specific understanding or principle within the knowledge of a skilled artisan that would motivate one with no knowledge of Rouffet's invention to make the combination, this court infers that the examiner selected these references with the assistance of hindsight. This court forbids the use of hindsight in the selection of references that comprise the case of obviousness. See In re Gorman, 933 F.2d 982, 986, 18 U.S.P.Q.2d 1885, 1888 (Fed.Cir. 1991). Lacking a motivation to combine references, the Board did not show a proper prima facie case of obviousness. This court reverses the rejection over the combination...

"Finally, I note that the Applicant also used a hindsight argument during prosecution and in the Appeal Brief, and the Board also found hindsight. Personally, I find hindsight to be a particularly UNhelpful way of viewing obviousness. Hindsight is the conclusion reached when the prima facie case isn't made ... the Examiner must have used hindsight because he hasn't made a prima facie case. Hindsight is not itself a standalone argument against obviousness."

This is wild, Karen.

1. It's far from clear what the "prima facie" case means any more. After In re Jung, all that is required to make a pf case is satisfying 35 U.S.C. 132. But, undeniably, an examiner can satisfy 132 and also engage in impermissible hindsight. Jung doesn't really square with any of Newman's earlier opinions on the prima facie case, and she sets a much higher bar for it.

2. Regardless of whether you follow Jung or Newman's opinions, etc., I've never heard anyone tie the concept of hindsight exclusively to the concept of the p.f. case.

3. Hindsight is simply what you argue when you think that the Examiner has put together a combination based on the Examiner's own knowledge of the invention, and not just the prior art and common sense. That applies regardless of whether a p.f. case is made (whatever the p.f. concept means anyway).

4. That said, I agree that hindsight can be difficult (or unfruitful) to argue, esp. to Examiners. Nevertheless, the Board can and must consider it. There is also a lot of great case law to argue. One study showed that lack-of-reason-to-combine (which is just hindsight from another perspective) is the most successful argument at the BPAI/PTAB, more successful than missing element.

>Hindsight is simply what you argue >when ...Examiner has put together a >combination based on the Examiner's >own knowledge of the invention, >and not just prior art and common >sense.

"Own knowledge" is a little to narrow, isn't it. I mean, you don't have any direct evidence that the Examiner used his own knowledge -- even if gleaned from the Applicant's spec.

No, of course, you don't have any direct evidence about this. Instead, hindsight is a conclusion that you reach AFTER showing that the prior art plus common sense doesn't render the claimed features obvious.

>That applies regardless of >whether a p.f. case is made

Not in my mind. To restate what I said above, it's precisely *because* the Examiner didn't show the elements are taught in the prior art and/or didn't provide a rationale -- that is, because he didn't make a PF case of obviousness -- that he *must* have used hindsight.

Here, I'm using the term "PF case" in its classic sense -- laying out the elements required to show obviousness -- rather than talking about what sort of showing is required for those elements.

>lack-of-reason-to-combine (which >is just hindsight from another >perspective)

Again, I absolutely disagree on this point, as a matter of semantics. Hindsight is not equivalent to lack-of-reason-to-combine, and it's not even lack-of-reason-to-combine seen from another viewpoint. It is an inference drawn from the lack-of-reason-to-combine.

"As a side note, you'll recall that the Examiner mentioned the predictable results rationale in the Answer, but also used an explicit motivation to combine from the secondary reference. The Board didn't address this alternative rationale."

As a side note, I wonder what the result might have been if the Board had reviewed the rejection that was made.

"As a side note, I wonder what the result might have been if the Board had reviewed the rejection that was made."

Lulz. More often than not they review a rejection they themselves make up on the spot, affirm it (shocking!), and then fail to designate it as a new grounds. So let's not begrudge the applicant getting away with one here.

"It's far from clear what the 'prima facie' case means any more."

IDK about that. I was searching some case law the other day and came upon a decision that said, something to the effect of, "A prima facie case is established when the position laid out by the examiner, without any rebuttal evidence and/or argument from applicant, compels a conclusion that the claim is more likely obvious than not." Wish I could remember the case and/or had hit the print button. Alas, I do/did not.

But I do agree with you that Jung seems to have lessened what the examiner is actually required to put down as a position. Jung seems to me to stand for the proposition that if the examiner just gets in the ballpark, then if somebody who actually does know something about the law (e.g. a practitioner, a judge (theoretically)) can make hay out of it, then the burden is shifted. As none of the examiners/SPE's/QAS's/OPQA's/TC Directors/otheruselessknownothingdonothing's over at the PTO understand anything about evidence, burdens, etc., the Fed. Cir. in Jung seemed to be telling the patent bar to do the work for them. So if the examiner rejects A in view of B, and it's the typical sh!tty rejection, but could be made into an arguably good rejection by somebody who knows something, the burden is shifted and you have to respond as required by Rule 111.

I think the most important thing to remember is that the prima facie case is merely a procedural device, and that the ultimate burden of establishing, by a preponderance, unpatentability always remains on the examiner/PTO. None of the examiners/etc. understand this, and precious few of the APJ's do.

"IDK about that. I was searching some case law the other day and came upon a decision that said, something to the effect of, "A prima facie case is established when the position laid out by the examiner, without any rebuttal evidence and/or argument from applicant, compels a conclusion that the claim is more likely obvious than not." Wish I could remember the case and/or had hit the print button. Alas, I do/did not."

That's Newman's view. See In re Spada. It's in a few other decisions, mostly from the late 80s and early 90s. As far as I know, she is the only one who holds that view (like many of her views).

"But I do agree with you that Jung seems to have lessened what the examiner is actually required to put down as a position. Jung seems to me to stand for the proposition that if the examiner just gets in the ballpark, then if somebody who actually does know something about the law (e.g. a practitioner, a judge (theoretically)) can make hay out of it, then the burden is shifted."

Right. Jung says that the Examiner just has to satisfy section 132. That's a very low standard, much lower than Spada.

The "more like than not" standard is simply another term for "preponderance of the evidence" standard, which means >50%.

When it comes to a prima facie case, the evidence is presumed true unless rebutted. However, assume you have a claim that recites: "comprising: A, B, C, and D." If the Examiner presents evidence as to A, B, and D and not C then a prima facie case is not made out. In this instance, the weight of the evidence for C being shown is "0." Even assuming that Applicant also provided zero evidence, 0 /> 0. Hence, the preponderance of the evidence standard has not been met.

"A prima facie case is established when the position laid out by the examiner, without any rebuttal evidence and/or argument from applicant, compels a conclusion that the claim is more likely obvious than not."This is correct … if the Examiner's "position" does not meet the preponderance of the evidence test, then a prima facie case has not been made.

See discussion here regarding preponderance of the evidence:http://www.uspto.gov/web/offices/pac/mpep/s2142.html

In re Jung stands for little more than an examiner that explicitly points out features that allegedly correspond to the claim limitations has met a prima facie case as to that limitation. I've looked at the rejection that was appealed within In re Jung and it is one of the better ones I've seen. The Examiner identified, by reference number, the alleged feature. This is much better than I usually see. What the Federal Circuit stated is this explicit identification of the alleged feature was sufficient to meet the notice requirement of 35 USC 132. When the evidence is rebutted then even .0000001>0.

"Jung says that the Examiner just has to satisfy section 132. That's a very low standard, much lower than Spada."No … both decisions are consistent. The rejection within Jung stated: "a first charge pump (320) (see Col. 5, lines 28-33, 37-39) operably coupled with the first charge well, a first well-charge-well-controller (340) operably coupled with said first charge pump (see Col. 5, lines 37-39 and Col. 6, lines 38-44, 64-66)." The issue was whether the identification of the "well-charge-level controller" was sufficient. Here, the Federal Circuit held that the notice requirement was met.

The prima facie case is a burden shifting mechanism. In the example I provided above, if the Examiner doesn't provide any evidence regarding C, then the burden hasn't shifted. Moreover, I would argue that if the Jung Examiner had cited column 2, line 15 through column 4, line 65 for the well-charge-level-controller, then the Federal Circuit would have likely agreed that a prima facie case had not been met since the notice requirement had not been met (i.e., "rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.") You cannot rebut evidence when a rejection is so uninformative as to prevent Applicants from understanding the basis of the rejection.

Jung is not limited to its facts. The court in Jung did not say "the Examiner made a pf case, because the Examiner did all of this beautiful work in the Office Action, and went well above the requirements of section 132." The court said, "the Examiner satisfied 132." Period. The end. Take a look at 132. It's incredibly easy to satisfy that standard. Nothing in Jung said that it was limited to the facts of the case or the relatively nice Office Action that the Examiner made.

If you're going to argue that Newman's higher standard prevails, then this is your argument: Jung was not decided en banc. The Jung panel had no authority to overrule Spada, Oetiker, and similar cases. If those earlier cases set a higher bar (as I would argue), then that remains the law. The Jung court had no authority to lower that bar.

"The court said, 'the Examiner satisfied 132.' Period. The end. Take a look at 132."You cannot divorce the holding from the facts.

The Federal Circuit, in Jung, also cited the following: That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). I see these type of rejections ALL THE TIME. I've got a 20 word clauses for which the Examiner cites: "See column 15, lines 10-48."

" It's incredibly easy to satisfy that standard."What is that standard? and how does it differ from the one that you think Newman proposed?

>[Jung said section 132] “is >violated when a rejection is so >uninformative that it prevents the >applicant from recognizing and >seeking to counter the grounds for >rejection.” [citing Chester v. >Miller]. I see these type of >rejections ALL THE TIME. I've got a >20 word clauses for which the >Examiner cites: "See column 15, >lines 10-48."

Personally, I agree with you: "20 word clause for which Ex cites Col X lines XXX" is indeed "so uninformative", so such rejections don't rise to the level of a PF case.

Unfortunately, we don't have any cases after Jung that interpret where the "so uninformative" line is.

Therefore, refusing to make a real argument because the lack of a PF case doesn't require you to do so, seems like a really bad strategy to me. There's a *huge* risk that the BPAI says "Yeah, that vague rejection does meet the PF standard, and you didn't make any arguments to show error, so the rejection is affirmed".

This is what Newman wrote in a footnote in Spada. She has said similar things elsewhere:

"The prima facie case is a procedural tool which, as used in patent examination (as by courts in general), means not only that the evidence of the prior art would reasonably allow the conclusion the examiner seeks, but also that the prior art compels such a conclusion if the applicant produces no evidence or argument to rebut it. See Black's Law Dictionary 1071 (5th Ed.1979)."

This is a very high standard. This means that, to make a pf case, the Examiner's case must be so strong that the Examiner will win unless Applicant provides a good rebuttal.

Specifically, note that Newman's standard has an element of *accuracy*. The Examiner must be correct to the point that rebuttal is required to overturn the Examiner.

Now look at Jung. Jung quotes 35 USC 132, and also quotes an earlier case, Chester*. That standard is:

“is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”

This is a much easier standard to satisfy. Unlike the Spada standard, there is no concern with the Examiner's correctness or accuracy. The Examiner could say that the claim is rejected because unicorns danced over the rainbow. (Yes, I'm exaggerating, but just to make a point.) As long as the Applicant understands the Examiner's reasoning - no matter how incorrect the reasoning is - then Jung is satisfied.

Jung implicitly lowers the bar from Spada, Oetiker, Piasecki, and similar cases.

*. Jung quotes only the most applicant-unfriendly portions of Oetiker and Piasecki, which are famous cases on the pf case. Then Jung pulls Chester, an interference case, out of nowhere.

"This is a very high standard."Surely, you jest. The prima facie standard is a very LOW standard. All you have to do is produce some evidence.

"the Examiner's case must be so strong that the Examiner will win unless Applicant provides a good rebuttal."Wrong. Wrong. Wrong. Wrong. Wrong. Oh … and I forgot to say … Wrong and Wrong. Remember the standard is preponderance of the evidence and the Examiner has the burden of proof. This means if Applicant doesn't provide any rebuttal (i.e., zero evidence/arguments), all the Examiner has to do is provide just a whisper, a hint, more than a mere scintilla of evidence because 0.00001>0. When that happens, the Examiner makes out a prima facie case and the burden is now on Applicant to put some evidence on the scale.

Besides, your statement doesn't make sense. Did you mean "if" instead of "unless"? A prima facie case is one that doesn't consider the rebuttal evidence. As Newman stated, it is a procedural tool that informs when the Applicant even has the burden to provide a rebuttal. If a prima facie case is not made out (that means the Examiner has provided 0 evidence on at least one element), then the burden hasn't shifted. FYI – this is REALY basic stuff.

"The Examiner could say that the claim is rejected because unicorns danced over the rainbow. (Yes, I'm exaggerating, but just to make a point.)"Read Gechter v. Davidson, Ex parte Frye, and Zurko. Under Frye, all issues raised are reviewed de novo and no deference is given to the Examiner's position. Under Gechter, "the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review." Under Zurko, the Patent Office's findings of fact are reviewed for substantial evidence. You "unicorns danced over the rainbow" findings would not be considered based upon substantial evidence. Moreover, the finding of "unicorns danced over the rainbow" would be considered "so informative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." There is no relevance of "unicorns danced over the rainbow" to the (hypothetically) claimed "A is connected to B using G."

You say that "[a]s long as the Applicant understands the Examiner's reasoning - no matter how incorrect the reasoning is - then Jung is satisfied," but if the findings are so disjointed from the claim language, then it does not satisfy 35 USC 132.

Jung is not a great case, but I think it is easily distinguishable on the facts.

>finding of "unicorns danced over the >rainbow" would be considered "so >informative ... [because] there is >no relevance of "unicorns danced >over the rainbow" to the >(hypothetically) claimed "A is >connected to B using G."

So your position is that the "[un]informative" language in Jung means more than just "Applicant understands the Examiner's position". It also implies some degree of relevance to the claim element.

I certainly hope future decisions interpreting Jung will see it that way.

I suppose my reject-toenail-clami-using-roofing-nail example (elsewhere in comment thread) is a closer call. Not only do I understand what the Examiner is saying, it's marginally relevant to the claim ... at least way more relevant than unicorns are to connections between parts.

You can nitpick my writing all you want. But if you think that the Chester/Jung standard is exactly the same as the Spada/Oetiker/Piasecki standard, then you're insane. At the very least, Spada requires that the Examiner be correct to some degree, but Chester/Jung simply requires the Examiner to be clear.

Also, you're misunderstanding the preponderance standard. The standard applies to evidence only, not arguments (as you imply). Moreover, the Examiner's evidence can undermine the Examiner's own position.

For example, if the Examiner puts forth 3 different pieces of evidence, and you put forth 0, that doesn't mean that the Examiner wins. Examiners can, and routinely do, put worth evidence that undermines their own rejection (think: teaching away). In many or most 134 appeals to the PTAB, applicants do not even put forth rebuttal evidence. Yet they win most of those appeals. By your logic, that should be impossible, which is why your logic is wrong. You say that this is "REALLY basic stuff," but you don't even get it right yourself.

And don't lecture me about Gechter, Zurko, and Frye. I'm familiar with all of them. You overstate the rule in Frye. And Gechter and Zurko are less on point than Spada/Oetiker/Jung etc. Zurko itself establishes the substantial evidence test at the CAFC level, which is different than the preponderance test at the PTAB level (which you mangle).

One last point, you say "Jung is not a great case, but I think it is easily distinguishable on the facts."

But JUNG IS NOT LIMITED TO ITS FACTS! How many times do I have to shout that before you'll get it through your skull? Jung announces a rule that is based on the test from Chester, and based on the literal language of 35 USC 132. Nothing about that rule is limited to the beautiful Office Action that the Examiner made in Jung. I dare you to find a single passage in Jung that says "don't worry Applicant, the rule we announce today is limited to the beautiful facts in this case, and we will not uphold vaguer/more confusing rejections just because they satisfy Chester/132." Jung is a perfect example of how bad facts make bad law, precisely because Jung is not limited to the facts of that case.

As everybody outside the PTO, including applicants, the patent bar, the trial courts, the appeallate courts, etc. is pretty much used to doing the PTO's job for it, meeting the notice requirements of section 132 is an incredibly low standard, IMHO. And I think that's what Jung stands for. It doesn't matter what the examiner's position is. If the judges read the spec and the claims, and the prior art cited by the examiner, and they can make out a rejection for themselves, the notice requirement of section 132 is satisfied.

Inside the PTO, the level is even lower. It pretty much amounts to: did the examiner actually cite a relevant section of 35 USC and put something, anything down on paper and send it out? As nobody at the PTO, including examiners/SPE's/QAS's/SPRE's/TC Directors/insertotheruselessknownothingdonothingshere, actually reads the spec, the claims, the prior art, and the silly nonsense the examiner actually put on paper, as long as all the claims are rejected the OA will be signed and sent to applicant no matter how ridiculous the examiner's position actually is. So within the PTO, the prima facie case amounts to little more than: were the claims rejected in writing? If yes, then a prima facie case was made.

"if the Examiner puts forth 3 different pieces of evidence, and you put forth 0, that doesn't mean that the Examiner wins."If those 3 different pieces of evidence establish a prima facie case, then the Examiner wins if you don't rebut.

"The standard applies to evidence only, not arguments (as you imply)."From Frye:"The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon. See Oetiker, 977 F.2d at 1445 (“In reviewing the examiner’s decision on appeal, the Board must necessarily weigh all of the evidence and argument.”)

"The examiner then determines patentability 'on the totality of the record, by a preponderance of the evidence with due consideration to the persuasiveness of argument.' Oetiker, 977 F.2d at 1445."

"In many or most 134 appeals to the PTAB, applicants do not even put forth rebuttal evidence."To the extent that they do not they do put forth arguments, which must be considered.

"By your logic, that should be impossible, which is why your logic is wrong."See above, arguments must also be considered.

"Zurko itself establishes the substantial evidence test at the CAFC level, which is different than the preponderance test at the PTAB level (which you mangle)."No … the "substantial evidence" test is merely the bar that the "evidence" must meet before it can be considered. My 12 year old niece's note that reference A doesn't teach X would not meet the substantial evidence test. The preponderance test looks at all of evidence for and against (that can be considered) and decides what evidence is greater.

"JUNG IS NOT LIMITED TO ITS FACTS!"It is when I argue it. Are you an attorney or a mouse? Attorneys argue that XYZ case doesn't apply because the facts are different. As you admitted earlier, Jung did not overrule Oetiker, and I don't see how the Oetiker court would have came down differently than the Jung court. I can easily argue that "such information and references as may be useful in judging the propriety of continuing prosecution of his application" is what discussed in the Federal Circuit's other cases including Oetiker.

The Jung court did not explicitly identify what is meant by "such information and references as may be useful in judging the propriety of continuing prosecution of his application." As such, I would argue you have to look at the facts (e.g., the Office Action) What the Jung court stated was "There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection." I'll argue that Jung merely stands for "such information and references as may be useful in judging the propriety of continuing prosecution of his application" not including an "on-the-record claim construction of every term in every rejected claim." This is what the court said. Anything else is speculation, and thus, we should fall back to Oetiker and the other Federal Circuit cases for guidance as to what is meant by a prima facie case.

I can easily argue that my current fact pattern does not require an "on-the record claim construction of every term in every rejected claimed" – only those disputed claim limitations for which the Examiner did not explicitly identify an alleged disclosing feature in the prior art.

I can easily argue that the Examiner's citation of column 6, lines 10-60 as to a 15 word claim phrase prevents Applicants from "determin[ing] what the issues are on which he can or should produce evidence." E.g., "claim 6 recites 'A connected to C using G.' The examiner's cited passage does not use the terms A, C, or G, and applicant can only guess as to what teachings which column 6, lines 10-60 correspond to these limitations. Thus, the examiner has failed to meet the notice require of 35 USC 132."

Jung is a perfect example of how bad facts make bad law, precisely because Jung is not limited to the facts of that case.I agree it is a bad case. The people who took those facts to the Federal Circuit should be strung up by their heels. As I wrote when this first came out, it was an incredibly bad fact pattern to appeal. The Examiner actually did a decent job in the rejection. I could identify hundreds and hundreds of Office Actions with (much) worse rejections. That being said, you can limit any case to its facts so long as you argue it – and your facts are different enough. Jung didn't outline any easy-to-understand bright line principle – 35 USC 132 is definitely open to interpretation.

"Chester/Jung standard is exactly the same as the Spada/Oetiker/Piasecki standard, then you're insane. "

I asked Newman about it the other day when she was here, she says they're the same. Since she wrote Oetiker, and since I can read Oetiker perfectly in line with Jung, I think she is correct, and I think anyone else agreeing with this is also correct.

Part of the enjoyment of the job for me is pointing out how many different ways the examiner miserably failed to establish a prima facie case. If they aren't going to do their job correctly, I think we should at least get to tell them how sh!tty they are.

>Spada requires that Examiner >be correct to some degree, but >Chester/Jung simply requires the >Examiner to be clear.

Put another way, perhaps Spada requires the Examiner's contention to pass the straight face test, and Jung does not.

So a rejection that relies on a passage about roofing nails for the claim limitation "fungus on a nail" -- in an app that's about treating fingernail and toenail fungus -- meets the Jung test. Because the rejection does inform me that the Examiner is equating a toenail with a roofing nail.

But it doesn't meet Spada standard because the Examiner's position is based on a claim interpretation that is laughable.

So if you read Jung as being just about notice, then it's enough to for the Ex. to put a contention on paper, no matter how ridiculous.

>I can easily argue that my current >fact pattern does not require >"on-the record claim construction >of every term ..." >>I can easily argue that the >Examiner's citation of column 6, >lines 10-60 as to a 15 word claim

Do you make such arguments before the Examiner and/or the Board? Or do you save them for when you appeal to the Fed Cir?

I suppose there are at least two reasons to make these arguments during prosecution. One, you can't win if you don't try, and maybe the facts of your rejection are so bad that the Board reverses because the Ex didn't meet the Jung standard. Two, perhaps you have to put these arguments on the record on appeal to the PTAB to preserve them for appeal to the Fed Cir?

I don't think it's a *bad* idea to bring up these arguments, if your client is okay with it and willing to pay for any extra time. What you shouldn't do (IMHO) is stand on these grounds alone. That is, you should also try to figure out what the Examiner means and argue against it.

"What you shouldn't do (IMHO) is stand on these grounds alone. That is, you should also try to figure out what the Examiner means and argue against it."

That's all and well if it can be done. However, when the Examiner cites column 6, lines 10-60 as to a 15 word claim limitation and I cannot even begin to see where the Examiner is coming from ... that is the BEST argument.

I'll ask the examiner to specifically identify limitation A, limitation B, limitation C, limitation D, and limitation E. Sometimes they do it ... and it makes my job easier in identify examiner error. Other times they don't and when they don't, I have a field day in my appeal brief explainig why the Examiner has not put applicants on notice as to the specific reasons why the Examiner has rejected the claims.

Although I'm not fond of the Board, they are not dummies ... they know a snow job from the Examiner when they see it.

>when the alleged predictable result requires >a series of events to occur from the original >initiating event.

Just to clarify .. this is the "predictable result" because that's what the claims require, right? And the "lack of predictable results" corresponds to how the references actually fit together? That is, when there is a mismatch between what the claims require and how the refs fit together, we can call this a "lack of predictable results"?

All of your quotes about A. the preponderance standard and B. argument/evidence just amount to: "the judge/examiner decides the case by considering the arguments and apply the preponderance standard." Everyone already agrees with that; it's consistent with what I said. The fact that the preponderance rule applies to evidence, doesn't mean that you don't argue that you win under the standard.

"No … the "substantial evidence" test is merely the bar that the "evidence" must meet before it can be considered."

No, the substantial evidence test does not define what evidence is considered. It defines what fact finding gets deference on appeal. Very different.

Guess what? Anyone can argue ANYTHING! So the fact that you can argue X has very little weight. This is what your argument would look like in court:

You: Jung is limited to its factsMe: Your honor, the Jung opinion never says that it is limited to its facts. On the contrary, Jung announces a broadly worded rule that is defined in terms of Chester and 35 USC 132. The Examiner satisfied that rule here, even if the Office Action is not a model of clarity.

"I asked Newman about it the other day when she was here, she says they're the same."

Well, I asked Justice Scalia about it today, and he says that they're different. ;)

Still, it's very surprising to me that she would 100% agree with Dyk (on the Jung panel) about an issue of PTO procedure like this. Esp. when the Jung opinion basically ignores most of the precedent on the prima facie case that Newman herself wrote.

"Still, it's very surprising to me that she would 100% agree with Dyk (on the Jung panel) about an issue of PTO procedure like this. "

Then talk to her about it next time you see her.

"Esp. when the Jung opinion basically ignores most of the precedent on the prima facie case that Newman herself wrote."

Because what she wrote doesn't mean what you think it means. Which she can hold your hand through if you ask her nicely, and you will see that it fits in quite nicely, perfectly in fact, with Jung. Indeed, to her, this isn't even an issue save in the minds of some prosecutors.

In short, her writing not-very-elegant decisions and your ability to misinterpret them (along with others of your relative reading ability) doesn't magically make your misinterpretation of them "precedential".

Appreciate your posts, and generally agree with you in most instances, but have to disagree that Jung isn't limited to its facts. Every decision is limited to its facts to the extent that there has to be some similarity between the facts of the previous decision and the case at hand to permit reliance on the previous decision.

Only knuckleheads from the PTO think that decisions are disembodied from facts. Witness the PTO's cite to In re Bogese for the idea that the PTO's "inherent authority" to regulate the prosecution of applications permitted them to place a hard limit on the number of applications that could be filed under section 120. When that bumbling fool Jim Toupin offered up that argument at the Federal Circuit arguments J. Prost literally laughed in his face. I almost felt bad for him, if he wasn't such a complete jerk out to screw patent applicants out of their rights.

Same with Star Fruits. I hear examiners chirping "Star Fruits! Star Fruits!" whenever the subject of Rule 105 comes up, as if the decision gives them a blanket license to demand any information they want, as opposed to what Rule 105 actually permits them to request.

So the argument against Jung is exactly what was noted above: if the rejection is so uninformative as to prevent applicant from replying to the rejection, then the notice requirement of section 132 has not been met. That was true before the Jung decision, and it is true after.

Court decisions are not, never have been, and never will be "rules." Judges don't get to make "rules," they get to decide cases.

Saying "[j]udges don't get to make 'rules'" is crazy. You are, as far as I know, the only person who holds that view.

I can cite dozens (maybe hundreds) of "rules" that the Federal Circuit has created over the years. A few of these have been reversed by the Supreme Court; most have not. There is nothing special about the Federal Circuit in this regard.

At least in the common law, judges make rules. That's the essence of the common law. For patent law, common law is necessary whenever the statute is not 100% clear.

The fact that judges makes rules follows, naturally, from the fact that earlier CAFC panels bind later panels. And later en banc panels can overrule earlier panels. That entire concept of precedent only makes sense if cases are not limited to their facts, but announce rules that apply to different sets of facts.

Here you might say: "well, in that case, the rule is still limited to the facts." But which facts? The rule in Jung is not limited to the facts of Jung. It applies to any set of facts that satisfies its rule (the rule of Chester/132). But that is a tautology - every rule only applies to the facts that fit the rule, otherwise the rule is not satisfied. Everyone agrees with that. And if that is what the commentators here mean, when they say that "Jung is not limited to its facts," then they are saying something obvious, uncontroversial, and entirely consistent with what I am saying. But, if that is what they mean, then it is much more informative to say that "Jung is NOT limited to its facts," precisely because it announces a rule that will apply to different cases, with different facts.

"Saying "[j]udges don't get to make 'rules'" is crazy. You are, as far as I know, the only person who holds that view."

Anybody who understands our common law system holds that view. The panel in Jung did not make/issue/announce/create/postulate/whateveryouwanttocallit any "rule." They decided, based on the facts of the case before them, whether the examiner's rejection satisfied the requirements of 35 USC 132. That's all they did.

"Me: Your honor, the Jung opinion never says that it is limited to its facts. On the contrary, Jung announces a broadly worded rule that is defined in terms of Chester and 35 USC 132. The Examiner satisfied that rule here, even if the Office Action is not a model of clarity."

There's no need for them to state in their opinion that their decision is limited to the facts at issue in Jung. That's understood. Judges don't decide cases that aren't actually before them. That's why their decisions are not "rules" for cases that may not, will not, and/or do not ever come before them. Judges don't get to make "rules" for cases that don't even exist yet. They can make definitive statements as to what the law is given certain facts, i.e. the facts of the case they're deciding. But as soon as a new case with arguably different facts comes before them, they have to decide all over again what the law is/means given that new set of facts. They may decide that the new facts are similar enough to the old facts that their previous reasoning still applies, but they don't get to just say, "Hey, we announced a rule in another case a couple years back, and even though the parties argue the facts at issue here are different, we don't care, a rule's a rule." I can't recall ever seeing a decision from a court like that.

Look at the pending case regarding "affirmative action" (or whatever you want to call it) in admissions at the University of Texas. Are any of the previous Supreme Court cases a "rule" when it comes to this issue? Why can't the University of Texas just argue, "Previous Supreme Court decisions announced a rule that considering race in admissions to public universities was permissible"? If that's the "rule" announced by the Supreme Court by way of their previous decisions (and they have said in previous cases that considering race as a factor in admissions to public universities is permissible), why is the Supreme Court even hearing the pending case? Doesn't their "rule" from their previous case(s) just end the matter? Of course it doesn't. Because the facts are different. Time has passed. Public opinion may have changed. Judges are humans. They do consider those things.

Why didn't the Supreme Court in Brown v. Board of Ed. just say, "Hey, the RULE from Plessy v. Ferguson is that separate but equal is not an equal protection violation"?

"That entire concept of precedent only makes sense if cases are not limited to their facts, but announce rules that apply to different sets of facts."

You've got this exactly backwards. When you argue that a certain precedent should guide (control?) a court's decision, why do you think judges ask about, and opposing counsel will make pains to point out, any differences between the facts of the precedent and the facts of the case at hand? If the "rule" announced by the precedent applies regardless of differences in facts, why is so much time and effort spent distinguishing prior cases? That's why prior court decisions are not "rules."

"... it is much more informative to say that 'Jung is NOT limited to its facts,' precisely because it announces a rule that will apply to different cases, with different facts."

Jung has no application to different cases with different facts. Any, and every, time that an applicant for a patent argues that the examiner's rejection fails to satisfy the requirements of 35 USC 132, the court will have to decide, based on the facts of the case before it, whether the examiner's rejection satisfies 35 USC 132. Courts before Jung did that, the Jung panel did that, and panels after Jung will do that.

BTW, what is this "broadly word rule" that the panel in Jung "announced"? I personally haven't changed my approach in responses to OA's one bit because of Jung. I've been complying with Rule 111 all along. Before Jung and now after Jung.

Your comments here are so exasperating, I don't even know where to start.

"The panel in Jung did not make/issue/announce/create/postulate/whateveryouwanttocallit any "rule." They decided, based on the facts of the case before them, whether the examiner's rejection satisfied the requirements of 35 USC 132."

No, the panel in Jung decided what is required to make a prima facie case. Prior to Jung, it wasn't clear whether section 102, the APA, and/or CAFC precedent, placed some higher standard for the prima facie case than set forth in Jung. The panel in Jung said no. All the Examiner has to do is satisfy 132 (and Chester provides one interpretation of that standard). That's a rule. It doesn't just apply to Jung, it applies to all future cases until overturned by CAFC en banc, SCOTUS, or Congress.

"They may decide that the new facts are similar enough to the old facts that their previous reasoning still applies, but they don't get to just say, "Hey, we announced a rule in another case a couple years back, and even though the parties argue the facts at issue here are different, we don't care, a rule's a rule." I can't recall ever seeing a decision from a court like that."

The gaping hole in your logic is that rules do not just apply to single points of facts. The rule in Jung doesn't say: "If the Office Action here looks like the Office Action in Jung, then there is a prima facie case. Otherwise, we have no clue." That's not the rule. The rule is: does the examiner satisfy 35 U.S.C. 132. That rule applies to beautiful Office Actions that go beyond 132 (yes, prima facie case), Office Actions that just barely pass 132 (yes, prima facie case), and Office Actions that don't satisfy 132 (no prima facie case). The rule applies to a SPECTRUM of facts, not just a single point. That's the nature of a legal rule: it sorts different fact patterns into different outcomes. If it didn't do that, it wouldn't much of a rule.

In other words, when the CAFC cites precedent, it doesn't just cite it for cases that are sufficiently similar to the facts of the precedent. The CAFC cites KSR to show that a claim is obvious. But the CAFC ALSO cites KSR when arguing that a claim is not obvious. Legal rules go both ways; they're not limited to the facts of their original case; they sort different fact patterns into different outcomes. All of this is law school 101.

"Look at the pending case regarding "affirmative action" (or whatever you want to call it) in admissions at the University of Texas. Are any of the previous Supreme Court cases a "rule" when it comes to this issue?"

You're ignoring one GIGANTIC difference between the CAFC and the SCOTUS: SCOTUS is the final court of the land and, therefore, can change rules at its discretion. The CAFC can only do that en banc.

The same thing happens when the CAFC applies SCOTUS law. The CAFC cannot overrule it. The CAFC cannot overrule KSR, not even en banc, no matter how the CAFC wants to (and there are judges that want to). They are bound by the rules and standards of KSR: i.e. obviousness cannot be analyzed according to a rigid application of the TSM test.

Have you heard of CAFC rule 35? You can find the rule on the CAFC website. The rule states that "only the court en banc may overrule a binding precedent." That means that earlier panels bind later panels, unless the later panel changes the law en banc. That entire concept of rule 35 only makes sense if panels announce rules that apply to future cases, not just earlier cases.

"Courts before Jung did that, the Jung panel did that, and panels after Jung will do that."

No, the courts generally did not do that before Jung. Spada, Oetiker, Piasecki... the key prima facie cases before Jung... they do not even mention 132.

What is meant by "the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application"? I'll argue that this is what has already been covered by Oetiker and other Federal Circuit cases addressing the prima facie case.

You keep saying there is a difference but I don't see it. The phrase "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application" is not clear by any stretch. As such, you cannot persuasively argue that the application of 35 USC 132 is any different that discussed in the prior Federal Circuit cases.

"The CAFC cannot overrule KSR"They can limit it to its facts (not that they have, but hypothetically speaking). You don't have to "overrule" a case to ignore it.

"No, the panel in Jung decided what is required to make a prima facie case. Prior to Jung, it wasn't clear whether section 102, the APA, and/or CAFC precedent, placed some higher standard for the prima facie case than set forth in Jung. The panel in Jung said no. All the Examiner has to do is satisfy 132..."

Uhm, the examiner had to satisfy section 132 before Jung. It's a statutory requirement that the PTO has to meet. The only people who didn't understand that were the idiots at Intellectual Ventures and their idiot attorneys who appealed the heaping, steaming pile of dog doo doo that was their case. So if you're surprised/shocked/dismayed that a court "announced a broadly worded rule" that the PTO has to meet the statutory requirements in 35 USC, including section 132, then all I can say is that you're a little late to the party.

As J. Linn wrote in the decision, "[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578.

So if the "rule" that the court "announced" in Chester was that "[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence" what is your objection to the decision in Jung? The "rule" the court "announced" in Chester is clear for all to see: the PTO has to meet the requirements of section 132.

"No, the courts generally did not do that before Jung. Spada, Oetiker, Piasecki... the key prima facie cases before Jung... they do not even mention 132."

So? Chester mentions 132. Why is the "rule" that was "announced" in Chester any less "key" than the "rules" that were "announced" in Spada, or Oetiker or Piasecki?

You say 132 creates a much lower standard. How so? The standard for establishing a prima facie case is low to begin with.

Although you cite the language of 132, that language does not provide any bright line test.

Jung asked for a heightened explanation to establish a prima facie case ... this was denied. However, what Jung was asking for is MUCH MORE than what the USPTO has been giving us for decades. As such, to the extent that this heightened explanation was denied, it has not lessened the burden on the USPTO.

AnonymousNovember 7, 2012 8:39 AM:"No, the panel in Jung decided what is required to make a prima facie case."

"Jung contends that establishing a prima facie case requires more than just notice under § 132 [...] This court disagrees and sees no reason to impose a heightened burden on examiners beyond the notice requirement of § 132." Jung at 1363.

AnonymousNovember 7, 2012 10:53 AM:"You keep saying there is a difference but I don't see it. The phrase "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application" is not clear by any stretch. As such, you cannot persuasively argue that the application of 35 USC 132 is any different that discussed in the prior Federal Circuit cases."

Consider two situations. 1. In Oetiker, Newman wrote:

"The combination of elements from non-analogous sources, in a manner that reconstructs the applicant's invention only with the benefit of hindsight, is insufficient to present a prima facie case of obviousness."

In other words, Newman based the P.F. case on two concepts: A. non-analogous art, and B. hindsight. Those concepts involve the *correctness* of the Examiner's position. The Examiner can be perfectly clear in communicating the basis for his incorrect position. The Examiner can perfectly convey to the applicant that the claim is rejected over non-analogous art using hindsight. And Applicant's can perfectly understand the Examiner's reasoning - they just disagree with it. In that case, Oetiker says that there is no P.F. case. But Jung says that there is a P.F. case. Jung says that there is P.F. case, because the Examiner has explained his position enough for the applicant to respond and rebut. And the rebuttal is: the rejection, which the Examiner's has perfectly explained, is simply wrong, because it's based on non-analogous art and hindsight. That's *one* example of how Newman uses a higher standard for the P.F. case than the Jung panel.

2. The prima facie case evolved from the chemical arts. There, the doctrine of "structural similarity" results in a prima facie case. If there is a sufficient structural similarity, then a P.F. case is made, and the applicant must rebut. See Piasecki. But notice: the doctrine of structural similar has *nothing* to do with the clearness of the Examiner's explanation. It has to do with the structure in the prior art, and how close that structure is to the claimed compound. In other words, an Examiner could provide a crystal clear explanation for how a structurally-very-different compound created obviousness, and it wouldn't create a P.F. case, because the compound was too dissimilar structurally. Again, the focus in the case law was on the *correctness* of the Examiner's position, not on the clarity and thoroughness of the Examiner's Office Action.

"They can limit [KSR] to its facts (not that they have, but hypothetically speaking). You don't have to "overrule" a case to ignore it."

No they can't. The CAFC is bound by KSR for all obviousness decisions. The rule in KSR is: you cannot apply TSM in an inflexible way to decide obviousness. That rule applies to all obviousness cases, not just cases involving adjustable pedals like in KSR.

"The Examiner can perfectly convey to the applicant that the claim is rejected over non-analogous art using hindsight."

... and the Court, in its position of de novo view of an obviousness issue, can say that hindsight reasoning is not legally sufficient. Hence, the Examiner has not established a prima facie case -- i.e., set forth ALL of the elements of an obviousness rejection.

I cannot reject a claim to a transistor by saying "all the elements of the claim invention can be found on the planet Mercury." 35 USC 132 doesn't allow the Examiner to write anything and simply say "prima facie case made, your turn." The facts of Jung simply do not support that position.

"No they can't."You haven't read enough law then. It is certainly not unheard of for a Court to limit a prior case "to their facts." The old case isn't overruled (and stare decisis is preserved), but whatever "broad concept" may have been suggested by the old case is now limited to its facts.

"The rule in KSR is: you cannot apply TSM in an inflexible way to decide obviousness."Really, that is how you read KSR?????? Wow [grimacing face]. KSR stands for (i) Graham is still the law and (ii) TSM can be used but you don't have to use TSM.

"That rule applies to all obviousness cases, not just cases involving adjustable pedals like in KSR."You did see my comment about "hypothetically speaking"????

Besides, how could Klein say anything about KSR when Klein does not cite KSR?

[It's so much easier to argue if you don't bother to read the cases. But if you do read Wyers [ha, ha, fat chance], that is the point where you say the Federal Circuit was wrong. Jeesh. I shouldn't have to carry both sides of the argument.]

For the curious, the Federal Circuit decided Wyers v. Master Lock Co. in July 2010 and decidedIn re Klein in June 2011. The former was an infringement litigation and the latter was an appeal from PTO rejections.

"the Federal Circuit decided Wyers v. Master Lock Co. in July 2010 and decided In re Klein in June 2011. The former was an infringement litigation and the latter was an appeal from PTO rejections."

It seems our cryptic friend gave up on trying to defend some theory about how the chronology "supports my position, not yours."

Don't know if you're making a point about "infringement litigation" as opposed to "an appeal from PTO rejections." The only difference between judicial review with respect to "analogous art" -- assuming the law was followed -- is that more deference would be given to a PTO finding of analogousness.

"is that more deference would be given to a PTO finding of analogousness."

In Klein, the Federal Circuit overturned the PTO's analgousnes findings. I don't get how you take away the Fed. Circuit deferring to the PTO from the Klein decision. There was no deference shown at all. Did you actually read the Klein decision? It wouldn't seem so based on your post.

As far as "The answer to that supports my position, not yours", I'll take a stab at what I believe the alleged "cryptic" explanation means as it seems a fairly obvious explanation to me if you've actually bothered to read the cases.Klein was decided by Judges Newman, Schall, and Linn. Wyers was decided by Judges Lourie, Linn, and Dyk. Linn was only judge common to both decisions. In the context of the analogousness test, both cases cited In re Clay. In Wyers, Judge Dyk cited a portion of KSR as allegedly expanding the second part of the Clay test (i.e., the “reasonably pertinent to the particular problem” test). Judge Schall did not cite KSR in Klein, which was decided nearly a year later. In Wyers, Judge Linn wrote a concurring opinion to clarify his position beyond Judge Dyk's. Judge Linn apparently didn't have a problem with Klein not citing KSR as Linn didn't write a concurring opinion in that case.

Now, besides Klein being the latter decided case, since my practice focuses in on prosecution, Klein is much more to my liking since it reversed the BPAI. That's my bias. You clearly have yours.

Let me be clear, I agree with the original poster with regard to the issue of KSR not addressing analogousness. Analogousness of references was presumed in KSR. KSR did not address the analogous arts test. Now, there have been those who seek to mix apples and oranges by reading KSR into analogousness as Dyk did in Wyers. KSR dealt with finding reasons having a rational basis for combining the teachings of references and has nothing to do with the “reasonably pertinent to the particular problem” test.

I further cite the recent Federal Circuit decision in K-Tec, Inc. v. Vita-Mix Corp. which dealt with the analogous arts test and in which KSR played no part in the analogous art issue.

"There was no deference shown at all. Did you actually read the Klein decision? It wouldn't seem so based on your post."

You conveniently left out part of my quote about deference -- I said "assuming the law was followed" -- deference would be given to a PTO finding of analogousness. Analogousness is a question of fact, reviewed for substantial evidence from the PTO. Except when it's not.

"There was no deference shown at all." -- your words, not mine. So why should we follow Klein, when you contend it was wrongly decided?

Sorry, but you provided a lame attempt at explaining how the chronology of Wyers and Klein might support whatever the phantom thinks about supporting the "position," whatever it is. Since you're obviously an expert in US patent law, can you tell mr/ms cryptic whether the earlier or the later Fed. Cir. panel decision controls, if not overruled en banc or by the Supremes? [Hint -- the CCPA heard every case en banc, so the _later_ decision controlled]

"Now, there have been those who seek to mix apples and oranges by reading KSR into analogousness as Dyk did in Wyers."

See how easy that was? That's the point where you say the Federal Circuit was wrong. You're welcome. It would have been so much easier to mr/ms crypto to simply say the Fed. Cir. was wrong without pretending to know something about something.

"d0c87888 gets PWND and then spends the next post whining how he's still right. Priceless!"

Not sure how I got PowerShares Global Wind Energy Portfolio, but thanks.

At least you formulated an opinion. However, the _earlier_ Federal Circuit panel decision controls, until overruled en banc or by the Supremes. I'm confident our expert knew that. But that was well after our friend crypto was shamed by the error and departed for parts unknown. Timing is . . . .. ...... ...... everything.

Is it your contention that this particular panel decision controls over all other subesequent panel decisions or are you retreating to the much more limited position that this particular decision is good until overruled en banc or by the Supremes?

Not sure I understand the question. The "prior panel" rule applies to all (precedential) panel decisions that have not been overruled en banc or by the Supremes. Why would an opinion be designated "precedential" if it has no precedential effect?

A later panel may depart from the precedent of an earlier panel if the later panel determines that the precedent of the earlier panel has been modified by an intervening en banc or Supreme Court decision. Not the scenario in the case of Wyers and Klein.

In re Klein is no less precedential than Wyers. As pointed out, K-Tec, Inc. v. Vita-Mix Corp. follows In re Klein's approach and does not invoke KSR. K-Tec was decided by Judges Newman, Lourie, and Prost. Lourie is the only judge common to both Wyers and K-Tec. Lourie evidenced no problem with the lack of reference to KSR in K-Tec. That makes two of the Wyers judges (Linn and Lourie) who do not invoke KSR as part of the analogous arts test. So far, it seems that the only one invoking KSR is Judge Dyk.

So far, you've failed to provide any justification as to why the reasoning of KSR with respect to the rationale for combining references must be applied to the second prong of the analogous arts test.

Huh??? Do you understand what "precedent" means? Do you have access to a Black's Law Dictionary? Do you think a precedential panel opinion is binding only on the three judges who happen to be on the panel? Or only when those three happen to be on the same panel in some later case? You seem to be doing some kind of Supreme Court vote-counting. The Supremes hear their cases en banc. The Federal Circuit does not, unless voted to be taken en banc.

"So far, you've failed to provide any justification as to why the reasoning of KSR with respect to the rationale for combining references must be applied to the second prong of the analogous arts test."

I have made no attempt to. I simply pointed out that Fed. Cir. precedent says that KSR addressed the issue of analogous art. The later decisions in Klein and K-Tec (by their silence on the topic) cannot change that, because one cannot say Wyers was "wrong" because of silence in later panel opinions when there have been no intervening controlling decisions (en banc or Supremes). All I suggested was that anybody can gratuitously state that the Fed. Cir. was wrong in Wyers. For some odd reason, it took 13 days for some anon. to realize that, even when I spelled it out at the outset. Sheesh.

You don't specify what "case" you think it is that I've failed to make. There was a GOSG (Gathering of Smart Guys) that attempted to identify the universe in which the fact that Wyers predated Klein supports the position that the KSR decision did not address the issue of analogous art. That universe has yet to be identified.

I understand. It's easier to argue if you don't own a dictionary, are too lazy to borrow one, don't bother to research, don't need to cite any stinkin' authority, never heard of a case such as Atlantic Thermoplastics, thinks Giles S. Rich was an investment banker, never met a Federal Circuit technical adviser, don't know what the TA job description is. And don't care.

It does suggest that maybe all these complaints about examiner's not knowing the law have little validity. It also suggests why the PTAB (nee BPAI) has about a 95 per cent affirmance rate at the Federal Circuit.

"It does suggest that maybe all these complaints about examiner's not knowing the law have little validity. It also suggests why the PTAB (nee BPAI) has about a 95 per cent affirmance rate at the Federal Circuit."

[different poster here]As I have suspected in the past, you are definitely at the USPTO. BTW ... either you are being misled or you are doing the misleading. Where are you getting your numbers that PTAB has a 95% affirmance rate? and how are those numbers calculated? Are you including affirmed-in-part and reversed-in-part? The Federal Circuit statistics don't bear out that number.

Also, your statement is akin to the criminal prosecutor that states "I have a 100% conviction rate." That sounds pretty awesome to the uninformed. However, the reality is that a prosecutor gets to pick and choose what cases he brings to trial. If he/she doesn't think they'll win, oftentimes, they don't go to trial. Similarly, if the USPTO doesn't think they have a chance to win, they'll find a way to get the appeal withdrawn.

Also, anybody who thinks examiners know the law is simply not facing reality. The law is not easy … and even reasonable-minded attorneys can debate what is the law and what is not the law. It is UNREASONABLE to expect the average engineering-type to understand the law. You need only look at the number of appeals that never make it to the Board and look at the reversal rates at the Board as evidence that there is a lot of examiners who don't understand the law.

Even after 4 years, the stain of Dudas still permeates the USPTO. All the failed (and fatally flawed) rule packages out of Dudas era is also evidence that the higher-ups at the USPTO didn't understand the law.

"I understand. It's easier to argue if you don't own a dictionary, are too lazy to borrow one, don't bother to research, don't need to cite any stinkin' authority, never heard of a case such as Atlantic Thermoplastics, thinks Giles S. Rich was an investment banker, never met a Federal Circuit technical adviser, don't know what the TA job description is. And don't care."

"A Prime Example being d0c87888 who is under the warped belief that a single panel decision defines precedent for the entire Federal Circuit."

Judas Priest.

"This court has adopted the rule that prior decisions of a panel of the court are binding precedent on subsequent panels unless and until overturned in banc. . . . Where there is direct conflict, the precedential decision is the first." Newell Companies Inc. v. Kenney Manufacturing Co., 864 F2d 757 (Fed. Cir. 1988).

"You don't specify what "case" you think it is that I've failed to make."

One can see why you'd conveniently try to forget given that you alleged that the KSR decision addressed the issue of analogous art. You failed to state your case. All you did was cite a Federal Circuit panel decision where Judge Dyk referred to a portion of KSR. Where is the Supreme Court case mandating the application of the KSR reasoning with respect to rationale for combining references to "particular problem" prong of the analogous art test?

Arguendo, what about other post-KSR Federal Circuit panel decisions prior to Wyers that, like Klein and K-Tec, did not cite any aspect of KSR in the context of analogous art determinations? That completely cuts the legs out of the argument that Wyers is precedential.

Maybe PTO SPREs or the folks in OPLA read cases but the rest just copy-and-paste the form paragraphs they're given without any real understanding of case law interpretation or how to properly apply case law in the context of a rejection.

AnonymousNovember 7, 2012 8:37 AM:"Uhm, the examiner had to satisfy section 132 before Jung. [...] So if you're surprised/shocked/dismayed that a court "announced a broadly worded rule" that the PTO has to meet the statutory requirements in 35 USC, including section 132, then all I can say is that you're a little late to the party."

The new rule in Jung isn't that the Examiner has to satisfy 132. Everyone has always known that, as you point out. The rule is that the Examiner doesn't have to do anything more to make a prima facie case. That's not in the statute, and it's not in the earlier case law either (other than, perhaps Chester).

"So? Chester mentions 132. Why is the "rule" that was "announced" in Chester any less "key" than the "rules" that were "announced" in Spada, or Oetiker or Piasecki?"

Because nobody ever cited Chester about the prima facie case rule. Google Scholar lists about 11 cases that cite Chester, and about 10 that cite Chester before Jung. Not a single one before Jung cites Chester for the prima facie case. Chester is an interference decision. It is cited for subtleties of interference practice, for the standard for anticipation, for not considering new arguments on appeal, but not for the standard of a prima facie case.

In contrast, everyone associated Piasecki, Oetiker, Rinehart, etc. for the prima facie case. Just look at MPEP 2142. It cites all of those cases. Which case doesn't it cite? Chester. Why not? Because nobody thought that Chester set such a low bar for the prima facie case, until Jung. The PTO had every reason to cite Chester in MPEP 2142, because it's a PTO-friendly decision on the p.f. case. But it doesn't. MPEP 2142 focuses on the cases that everyone thought defined the prima facie case, and Chester isn't one of them.

But even if you're right - even if Chester is just as "key" as the other cases - there's still conflict. Chester sets the bar lower than the others. You still have to choose which rule you're going to follow.

"Chester is an interference decision. It is cited for subtleties of interference practice, for the standard for anticipation, for not considering new arguments on appeal, but not for the standard of a prima facie case."

So? The "broadly worded rule" that the court "announced" in Chester, decided by the way the same year as Spada and two years before Oetiker, is not limited to its facts.

"But even if you're right..." I am.

"...even if Chester is just as 'key' as the other cases..." It is. As you yourself noted panel decisions of the Federal Circuit are binding on other panels, unless overruled en banc, and only en banc decisions of the Fed. Cir. can overrule prior CCPA decisions. So Chester is just as "key" as any other binding precedent of the Federal Circuit.

"...there's still conflict." No there's not.

"Chester sets the bar lower than the others." No it doesn't.

"You still have to choose which rule you're going to follow." No you don't.

Here's all you need to know: If the examiner sends you anything in writing that is adverse in any way, you have to respond in writing and point out the supposed errors. That's Rule 111. The examiner has the ultimate burden of presenting evidence, establishing facts, and providing reasoning that makes it more likely than not that the claim is unpatentable (for whatever grounds, prima facie lacking written description, lacking enablement, lacking novelty, obvious, unclear/indefinite, etc.) If you believe the examiner has failed to meet that burden, you have to explain why. If you believe the examiner has met the burden, you have to present evidence, estabish facts, and present reasoning and arguments that outweigh what the examiner has presented. You had to do that before Jung, and you have to do it after Jung. The applicants in Jung had to do it, and failed miserably.

The mistake I think you're making is believing that the applicants in Jung had some colorable argument, or that there was some uncertainty in the law that they were seeking to clarify, and to their benefit. They did not. Their claim was slam dunk rejected by the examiner (correctly I might add, I read their app, the OA and the reference), and instead of amending the claim to narrow the claimed feature at issue, they made a bunch of arguments trying to import limitations from the spec into the claim, got face palmed by the examiner (again, rightfully so) and thought they'd kick up a bunch of dust at the Federal Circuit. J. Linn slapped them back to reality. Plain and simple.

To repeat: If you receive something in writing from the examiner that is adverse in any way, and you still want a patent, you MUST respond in writing and point out the errors in the examiner's Office Action.

You're smart and know what you're doing. If you review the examiner's rejection and the examiner is "wrong" you don't amend, point out the reasons why the unamended claims are allowable and request withdrawal of the objections/rejections. If the examiner is "right" you think of some amendments and/or some possible secondary considerations and argue those. Same thing you did before Jung, same thing you'll do after Jung.

The only thing you should take away from the Jung decision is don't ever be as stupid as the in-house people at Intellectual Ventures and/or as stupid/greedy as the idiots at the firm who took their appeal (who shall remain nameless).

"The only thing you should take away from the Jung decision is don't ever be as stupid as the in-house people at Intellectual Ventures and/or as stupid/greedy as the idiots at the firm who took their appeal (who shall remain nameless)."

"Chester is an interference decision. It is cited for...the standard for anticipation..."

It appears that you seem to think that the requirement of a prima facie case applies only to rejections for obviousness. It does not. It is a procedural tool that applies to every ground of rejection, e.g. 112 1st (written description and enablement), 112, 2nd, 102, 103, obviousness-type double patenting, etc. In your parlance, it is a "rule" that "is not limited to its facts."

"The new rule in Jung isn't that the Examiner has to satisfy 132. ... The rule is that the Examiner doesn't have to do anything more to make a prima facie case."

To the extent that you were reading any other precedent, or "rule," to require that the examiner is required to do anything more than satisfy 35 USC 132 and/or 37 CFR 104(c), then you were reading them wrong.

"The mistake I think you're making is believing that the applicants in Jung had some colorable argument, or that there was some uncertainty in the law that they were seeking to clarify, and to their benefit. They did not. Their claim was slam dunk rejected by the examiner (correctly I might add, I read their app, the OA and the reference), and instead of amending the claim to narrow the claimed feature at issue, they made a bunch of arguments trying to import limitations from the spec into the claim, got face palmed by the examiner (again, rightfully so) and thought they'd kick up a bunch of dust at the Federal Circuit. J. Linn slapped them back to reality. Plain and simple."

The only conclusion I can make is that you are simply not that familiar with Spada, Oetiker, Newman's dissent in In re Dillon, and other cases where she explains a different standard. I tried to explain how that standard is different than Spada above. There's not much more I can say. You either get it or you don't.

That said, I agree with you that 1. this argument was very unlikely to succeed in Jung. Even if I'm right, only Newman endorsed the higher standard. And Newman was not on the Jung panel. 2. Newman's higher standard, even if it exists, has a questionable basis in law. 3. As a practical matter, you must always point out the errors in the Examiner's position. Whether a "prima facie case" exists is, in that sense, a red herring. I agree with you about all of that. I simply think that, if you read Spada, Oetiker, Dillon, and related cases carefully, you get a sense that Newman thought it meant something more than satisfying 132.

AnonymousNovember 8, 2012 3:17 PM:

No, I know that the PF case applies to all grounds of rejection. In my comment, I was distinguishing between the standard for anticipation (i.e. the ultimate conclusion of anticipation) and the standard for a prima facie case. I wasn't distinguishing between anticipation and obviousness. My point was that the court never cited Chester for the standard for a PF case before Jung.

Anonymous November 8, 2012 3:29 PM:Read Oetiker. In Oetiker, Newman says that there is no prima face case because the Examiner used hindsight and non-analogous art. Those are substantive arguments, about the merits of the rejection. They have nothing to do with the clarity of the Examiner's argument or section 132. Now ask yourself, would the panel in Jung say that the Examiner made a prima facie case? I think it would. If you think it wouldn't why not? Why hasn't the Examiner in Oetiker satisfied Chester and 132? The Examiner did! The Examiner explained his reasoning, which was based on hindsight and non-analogous art. Then it was the Applicant's turn to rebut that prima facie case. In Newman's eyes, that's not enough for a prima facie case. To the Jung panel, that should be enough.

"To the Jung panel, that should be enough."You cannot know that. The facts of Jung were very different. In Jung, the Examiner actually did a good job. Any comment about what the Jung court would say for a different fact pattern is just speculation.

Ultimately, the question revolves around much "notice" puts somebody on notice under 132. We now know that what the Examiner did in Jung is enough. However, Jung does not address other fact patterns in which the level of "notice" is less.

Merely citing 102 and referring to the cited reference is not enough. Where is that line drawn? Jung merely stated that it isn't far to the right (i.e., lots of notice). As just, getting back to my original point, it is easy to distinguish Jung on the facts.

Your entire philosophy is based on the mistaken idea that CAFC precedent provides little or not value when predicting outcomes for cases with different fact patterns. That idea is simply false, as I've explained here at length.

CAFC cases, like any other case, can announce rules that apply to a spectrum of a fact patterns, not just the fact pattern in the case. Rules would be worthless if they only applied to a single data point.

Part of the job of courts, of the common law, of legal precedent, and of stare decisis, is that the public should be able to rely on legal rules to determine future behavior. Under your philosophy, courts cannot and do not serve that reliance function, because their decisions have so little to say about different fact patterns.

That is simply not how CAFC decisions or legal precedent works. Look at KSR. It doesn't just apply to adjustable brake sensors. The CAFC and the PTAB cite KSR in all technologies: biotech, mechanical, electrical, etc. Similarly, KSR held that a patent was obvious. But the courts do not just cite KSR when holding patents obvious. They cite KSR when holding subject matter was non-obvious (or not proven obvious).

The same for inequitable conduct. Therasense created a rule for inequitable conduct (but-for-plus). Therasense also vacated the holding below on inequitable conduct. But the courts do not just cite Therasense when vacating inequitable conduct. They cite it when positively holding that inequitable conduct occurred. And they cite Therasense in cases that have very different fact patterns than those in Therasense.

These are just two examples off the top of my head. There are legions of them.

35 USC 132 is unclear on its face. Ask a dozen people as to what is meant by "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application" and you'll get a dozen answers. As such, you need to look to court decisions to interpret what is meant.

Looking at Jung doesn't shed much light since it is a fact pattern at the extreme. You've chosen to read Jung as requiring little more than an Examiner saying "claim 1 – see reference A and 35 USC 102… you have now have notice." I'm saying that the facts of Jung do not support such an interpretation – not in the slightest.

I can also argue that all the other Federal Circuit cases involving the prima facie case still apply while also arguing they are not inconsistent with Jung. Again, the meaning of "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application" is unclear so I can argue that these decisions interpreted the language to require more to establish notice.

When I argue that the Examiner has failed to establish a prima facie case, I'll argue that the information missing is "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application." In fact, the language of 35 USC 132 itself is pretty expansive, so I don't think it'll be difficult at all to make that argument.

Jung stated you don't need Y and Z for a prima facie case.You are arguing that Jung stands for you only need A and B for a prima facie case.I'm saying that Jung doesn't preclude saying you need A, B, C, D, E, F, G, H, I, J, K, et al. to establish a prima facie case and that this is also consistent with other Federal Circuit cases.

If you want to continue to act like that is all an Examiner needs to establish a prima facie case is what you think it is … go ahead, it's your prerogative. Of course, you clients will suffer because you've taken off the table arguments you could have made but didn't – but don't let me stop you.

I'll say it again: if the examiner sends you anything in writing that is adverse in any way, and you still want a patent, you MUST respond in accordance with Rule 111. If your arguments are that the rejections are so unclear and so deficient that you aren't on notice as to what the grounds of rejection are, then argue that. But also argue why your claims are patentable over whatever gobbledygook the examiner has provided. If the examiner's reasoning is crystal clear, but you believe incorrect/legally deficient/whatever, then argue why the claims are patentable. If the examiner is arguably "correct" then amend, find some secondary considerations, submit some evidence, whatever.

All this hand wringing over whether J. Newman's "rule" is more important/stringent/persuasive/likable/moreclearlythoughtout/etc. than some other "rule" of some other judge(s) or some other case(s) is an ENORMOUS waste of time and effort.

Respond. In writing. Make every argument you think is correct and will give you a chance of overcoming the rejections.

"Respond. In writing. Make every argument you think is correct and will give you a chance of overcoming the rejections."

Well ... it depends. How much prosecution estoppel do you want to add? If the Examiner's rejection is so uninformative that you are simply guessing as to what the Examiner meant, do you really want to start adding a whole bunch of arguments that may not have been necessary and may bite you in the azz later on?

Although getting a patent may be "good enough" for some clients, other clients want a good patent with broad claims and limited estoppel. In that situation, you need to be careful as to what you argue and/or how you amend the claims. If you are shooting in the dark (because of a lousy rejection) there is a chance one of you shots may hit something you didn't intend to hit. This is why being able to make an argument based upon the Examiner's failure to establish a prima facie case is important.

I've had Examiners "expound" upon their arguments, and based upon this new information I'm often able to ditch some arguments that I may have made and focus on other arguments. As stated in M.P.E.P. § 706.07, "[t]he examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal." Asking for a clearer explanation of the Examiner's position cannot hurt. I find that the more an Examiner writes, the more rope they give me to hang their positions.

No it's not. If it was unclear on its face, don't you think the Jung court would have mentioned that? They didn't.

The Jung court hinged the ENTIRE prima facie case question on section 132. If section 132 was fatally ambiguous, how could they possibly do that? Why? They wouldn't. The Jung court didn't think that the statute had any ambiguity. They thought that it was clear and explicit enough to define the entire prima facie case question.

"such information and references as may be useful in judging of the propriety of continuing the prosecution of his application"

You don't need to interpret the statute further. Just use it's plain meaning. The information is either useful in judging whether to continue prosecution, or it isn't useful. That's a binary distinction, based on the simple English word "useful."

"Looking at Jung doesn't shed much light since it is a fact pattern at the extreme. You've chosen to read Jung as requiring little more than an Examiner saying "claim 1 – see reference A and 35 USC 102… you have now have notice." I'm saying that the facts of Jung do not support such an interpretation – not in the slightest."

Your logic here would be correct if Jung's holding was limited to its facts. But Jung is not limited to its facts - a proposition that your brain seems to be incapable of comprehending.

"When I argue that the Examiner has failed to establish a prima facie case, I'll argue that the information missing is "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.""

That argument will only work if, in fact, the information that the Examiner provides is not useful in deciding whether to continue prosecution. Unfortunately, that will almost never happen, because virtually all information is useful in helping me decide whether prosecute. It's hard to imagine what information I wouldn't want the Examiner to share when making that decision. So, good luck citing Jung for that argument, it will fail for all Office Actions that aren't totally meaningless.

"You are arguing that Jung stands for you only need A and B for a prima facie case.I'm saying that Jung doesn't preclude saying you need A, B, C, D, E, F, G, H, I, J, K, et al. to establish a prima facie case and that this is also consistent with other Federal Circuit cases."

Do you not understand simple logic? Only one of us can be right. Either A and B are the only requirements. Or they are not, and C, D, E, etc. are also requirements. We can't both be right.

Now go back and read Jung. It says, point blank: all the Examiner has to do is satisfy section 132. That's A. There is no B or C or D or E.

In reply, you can say that 132 is ambiguous. But nobody else seems to think that, including the court in Jung. Just use the plain meaning of the statute. It's a very low standard, that's why it's inconsistent with Newman's higher standard.

"No it's not. If it was unclear on its face, don't you think the Jung court would have mentioned that? They didn't."I'm sorry, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application" is not a bright line test. Of course, if you would care to explain exactly what it means, I'm sure everybody here would be very interested. In particular, perhaps you can explain what "may be useful" means. I don't know about you, but that seems awfully expansive as to the information required.

"They thought that it was clear and explicit enough to define the entire prima facie case question"How did they define the "entire prima facie case question" exactly? Inquiring minds want to know.

"The information is either useful in judging whether to continue prosecution, or it isn't useful."That question I don't think most people will have a problem with. However, the more important question is "how much?" as in "how much information that may be useful in judging of the propriety of continuing the prosecution of his application should be included?" All of it? Some of it? Just a smidgen? Where do we draw the line? Pray tell, please explain to use all exactly how much information is required based upon plain meaning of the statute?

"But Jung is not limited to its facts - a proposition that your brain seems to be incapable of comprehending."I'm limiting it to it facts because you (or anybody) have yet to set forth a broad recitation of the law based upon that decision beyond "just look at 132." Jung doesn't say what information is required to meet 132 – it only says what is not required to meet 132.

"That argument will only work if, in fact, the information that the Examiner provides is not useful in deciding whether to continue prosecution. Unfortunately, that will almost never happen, because virtually all information is useful in helping me decide whether prosecute."So … all an Examiner has to do is state, " claim 1 is rejected under 35 USC 102 based upon reference A" and that is enough? Is that what you are saying? Certainly, that information provides some usefulness in deciding to continue prosecution. So tell us, is simply stating the claim, the statutory rejection, and the reference enough to establish a prima facie case of unpatentability pursuant to 35 USC 132?

"nobody else seems to think that"Really, who else has stated that they know exactly what 35 USC 132 requires? I've seen cases that describe what 35 USC 132 doesn't require, but that is not the same thing.

That depends on what the substance of the claims is. If they are simply someone who took 4 pages or so to describe something that normal people would say in a sentence, then that cite is entirely appropriate. I routinely find claims where the attorney has bothered himself to drone on and on about something you can just say in one small sentence.

"I routinely find claims where the attorney has bothered himself to drone on and on about something you can just say in one small sentence."

Definitely an examiner there. I see your type all the time. Look at a claim ... think "I know what this invention is" and then cite a reference. However, what happens ALL THE TIME is that you COMPLETELY IGNORE the "twist" that makes the claimed invention different from the prior art. You are so convinced that you know what the invention is that you skip over the actual language of the claims in your haste to write the rejection and get your easy count.

"Of course, if you would care to explain exactly what it means, I'm sure everybody here would be very interested. In particular, perhaps you can explain what "may be useful" means."

There is no need for further explanation. The statute has a plain meaning. You're like an examiner who rejects claims as indefinite because they are not as narrow as he would like. Breadth is not indefiniteness. Section 132 is broad; it is not indefinite.

"I don't know about you, but that seems awfully expansive as to the information required."

It is awfully expansive - that's what I've been saying this entire thread! That's why it conflicts with earlier precendent that was less expansive (Spada, Oetiker, etc.). Remember, breadth does not equal indefiniteness.

They defined the PM case question in terms of 132, by stating that, to create a PM case, all you have to do is satisfy 132. You don't have to do anything else.

"However, the more important question is "how much?" as in "how much information that may be useful in judging of the propriety of continuing the prosecution of his application should be included?" All of it? Some of it? Just a smidgen?"

First of all, you're not quoting the full statute. 132 reads "the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful." So the statute requires both "reasons" and "information and references." As long as the Examiner sends that, 132 is satisfied.

You ask whether the Examiner must send "all" information - obviously not. The statute does not say "all." And the Examiner likely does not even possess "all" possibly useful information. As long as the Examiner provides reasons and "information and references" the statute is satisfied.

"Jung doesn't say what information is required to meet 132 – it only says what is not required to meet 132."

Jung doesn't say what information is required to meet 132, because 132 already does that. You treat the statute like it is an opaque, mysterious object. What if I gave you a definition for 132 in different language? Would you ask for a definition for that definition too? You can always demand further definitions. But if the language is already clear, then it is unreasonable to make that demand. You haven't identified any real ambiguity in 132 that demands a further definition.

"So tell us, is simply stating the claim, the statutory rejection, and the reference enough to establish a prima facie case of unpatentability pursuant to 35 USC 132?"

The Examiner must also provide "reasons," as required by 132. If the examiner does that, then the answer is yes, according to Jung. Of course, the answer is no according to Gechter, Spada, Oetiker, and other famous CAFC cases - which is why Jung is inconsistent with those cases (as I've said all along).

"It is awfully expansive - that's what I've been saying this entire thread! That's why it conflicts with earlier precendent that was less expansive (Spada, Oetiker, etc.). Remember, breadth does not equal indefiniteness."

You need to check your reading comprehension … I wrote it is awfully expansive as to the information required … i.e., there is a LOT of information required – not a little. Also, your "breadth does not equal indefiniteness" applies to claim language, not statutory construction.

"to create a PM case, all you have to do is satisfy 132."No helpful definition there.

"The Examiner must also provide 'reasons,' as required by 132."Reasons??? Reasons??? What the F is a reason? How much reason is enough reason? Please point to where 132 describes how much "reasons" is enough. I can read "reasons" to be just about anything – from requiring as great as an explicit element-to-teaching matching or as little as the Examiner stating no more than claim 1 is rejected under 35 USC 102 based upon US Patent 5,555,555. Where do you draw that line? I can say with 100% certainty that the "plain language" of 132 is ENTIRELY SILENT as to what reasons are sufficient and what are not.

Does Jung describe what "reasons" are sufficient and what are not sufficient? NO – all Jung states is that a claim construction for every element is not required.

I feel like I'm arguing with an Examiner --- who is constantly saying "your invention is disclosed in this reference ... somewhere ... I'm not going to tell you exactly where it is at, but trust me its there." My response to the Examiner is "don't beat around the bush, I claim X and Y, just tell me where X and Y is in the prior art."

Similarly, all I'm asking from you is to give me guidance as to what test can I apply (based upon your understanding of Jung and/or 132) against the next Office Action I get as to whether or not the Examiner made out a prima facie case or not. Merely waving your hands about while stating "look at 132, its in there somewhere" doesn't help.

What you don't seem to understand is that you can always demand that a statute be more specific. Always. I can find some ambiguity about most any statute.

By your relentless demands for further specificity, you could assert that the entire U.S. Code is fatally opaque and ambiguous. Of course, it isn't. You've focused your energy on section 132 here, but you could just as well focus it on 134 or some other statute.

Certain standards have to be met, before you can fairly say that a statute is fatally ambiguous. You haven't met that standard(s) here, so far as I can tell. 132 is written in plain English.

You can give me any Office Action, and I'll happily apply 132 to it. I'll simply ask if the Examiner provided reasons, information, and references, as the statute requires. That's it.

You say "how much reason is enough reason?" Well, according to the English language, the Office Action either contains reasons, or it doesn't. That's the test. If you can't apply that, then I question your grasp of the English language. You don't have to be a genius to apply that test. You're really making this harder than it needs to be, in a strained effort to limit Jung's holding.

Let's face the facts please. I've asked you many times and in many ways by what standard can you judge whether a rejection has is sufficient to establish a prima facie case. All you've done is say … "look at the statute, look at the statute." Why can't you say, "I'm not sure"? That would be the honest answer.

"so far as I can tell. 132 is written in plain English"So is 101 and it is a lot shorter than 132 … however 60 years later and we still don't know what 101 covers and what it doesn't. Then, of course, there is 103 … another model of clear language in patent law. Compare the term "obvious," as defined in the dictionary and how the term "obvious" is used in patent law and you get two ENTIRELY DIFFERENT things.

"You can give me any Office Action, and I'll happily apply 132 to it."I've given you a couple of examples to work with already – you haven't responded.

"If you can't apply that, then I question your grasp of the English language."Don't be a f'ng melodramatic idiot. If I say "claim 1 is rejected under 35 USC 102." That is a reason. Under your interpretation, that is enough. Am I right? The Examiner write the word "purple" besides "claim 1." Is that enough?

An associate walks into your office and asks you how much is reasons is enough. How are you going to EXPLAIN it? Don't give me this "I know it when I see it" cr@p.

Your answers are meaningless drivel -- and I say that with all sincerity. I get better responses from 1st year examiners.

All of your frustrations about ambiguity in 132 should be directed to Congress (for writing it) and to the CAFC (for making it the exclusive test for a PF case).

"Why can't you say, 'I'm not sure'? That would be the honest answer."

I can't say that because it would be a lie. The test is the statute. If you ask for a further, narrower, more specific test - there isn't one. Don't blame me for that, blame Congress of the CAFC. It's not my fault that you can find ambiguities in 132. I didn't draft it. And I didn't make it the exclusive test for the PF case.

"So is 101 and it is a lot shorter than 132 … however 60 years later and we still don't know what 101 covers and what it doesn't. Then, of course, there is 103 … another model of clear language in patent law. Compare the term "obvious," as defined in the dictionary and how the term "obvious" is used in patent law and you get two ENTIRELY DIFFERENT things."

The analogy with 101 and 103 undercuts your position, rather than helps it. You keep demanding a further test for satisfying 132. I tell you that there isn't one. Now you compare 132 to 101 and 103. Guess what? There is no further test for 101 and 103! Ha ha! Remember, there used to be a more specific test (TSM) for 103, and the Supreme Court struck it down (KSR)! Did the Supreme Court replace the TSM test with another test? No. All we've got is the statute, just like for 132, all we've got is the statute. (We've also got case law where relevant, but there is very little case law interpreting 132.)

""claim 1 is rejected under 35 USC 102." That is a reason. Under your interpretation, that is enough. Am I right? The Examiner write the word "purple" besides "claim 1." Is that enough?"

First example, no. You've just stated the ground of rejection. You haven't provided a reason *why* the claim is rejected.

Second example, no. The word "purple" is not a reason for rejecting a claim under any reasonable interpretation of the statute. It's a malformed, illogical statement.

See, I'm not evading your examples. I can do this all day long.

"An associate walks into your office and asks you how much is reasons is enough. How are you going to EXPLAIN it?"

An associate walks into your office and asks you for a more specific test for obviousness, how are you going to EXPLAIN it?

"There is no further test for 101 and 103"Ever heard of Graham? Ever heard of MOT? MOT may not be an exclusive test but it is a valuable clue. Again, I get more informative answers from an Examiner.

"You haven't provided a reason *why* the claim is rejected"Sure I have. Of course, if you disagree, why don't you point to the case law interpreting 132 that supports your position .... I'm holding my breath .... turning blue now .... OK, I give up.

"It's a malformed, illogical statement."You haven't read a lot of OAs recently, have you? They are FULL of malformed, illogical statements.

"The law is not always pretty."I'm the one who is saying the law is ambiguous and you are saying that it is clear as crystal. If it is clear as crystal, how can it "not always [be] pretty"?

I think we're confusing some issues. Sometimes it actually sounds like we agree. We both think that section 132 has ambiguities. But we don't agree. Because "section 132 has ambiguities" is not the extent of your position (or mine).

Let's distinguish between two full positions:

A. Section 132 has some ambiguities... and (A1) therefore there must be some test somewhere that resolves those ambiguities, so that we can explain them to new associates, and apply section 132 in a uniform and predictable manner. When we do this, we find out that (A2) the standard for a prima facie case is not so low (not as low as I suggested in this thread) and is perfectly consistent with Spada and Oetiker and earlier precedent

B. Section 132 has some ambiguities, but it's all we've got. So we have to apply the plain language of the statute as best as we can. When we do that, we find out that it's a pretty low standard to satisfy, which is inconsistent with (B2) Spada, Oetiker, and earlier case law.

Your position is A (as I understand it). My position is B. We agree that 132 has ambiguities. We just disagree about the rest.

About 101 and 103: I agree that case law has developed further guidance beyond the literal language of the statute. But 1. the further guidance is not very helpful - you said so yourself earlier in this thread, and 2. there is simply (to my knowledge) no similar case law analyzing the text of 132. If you're aware of something like MOT (for section 101) or Graham (for section 103) that applies to section 132, please let me know. I haven't seen it in this thread yet.

"You haven't read a lot of OAs recently, have you? They are FULL of malformed, illogical statements."

So? If you get an OA that just says "purple," then that's not a prima face case, even under Jung. Most Office Actions are not like that; I know, I work on hundreds of them as the years go by. If the Office Action provides some reasons, information, and references, but in a confusing and inarticulate manner, yet still helps you decide whether to continue prosecution (just not as much as you would like), then that does satisfy 132. Most Office Actions are like that.

"I'm the one who is saying the law is ambiguous and you are saying that it is clear as crystal. If it is clear as crystal, how can it "not always [be] pretty"?"

No, I never said that the law is crystal clear. I said that section 132 is written in plain English, and it's all we've got for now, so we have to apply it as best as we can. Compare my position B with your position A (above).

This is the way I look at it. 132 is unclear on its face (as it 101 and 103 … actually 101 SHOULD be much clearer than 103 or 132 but that is not how its interpreted).

Regardless, when determining what is enough to establish a prima facie case, it is clearly a waste of time going to 132. It doesn't give you a bright (or even fuzzy) line to work with. This means you have to look at the case law.

Let's work with a continuum from 0-100, with 0 is nothing needed for prima facie case and 100 is a word-by-word mapping from the claim to the prior art accompanied by claim constructions for each word.

Spada/Oetiker stands for the proposition that you need at least 60-75 (again no bright line but certainly some guidance). However, all Jung does is say that you don't need 98. Hence, there is nothing inconsistent between Jung and Spada/Oetiker. Jung doesn't say "you only need 10" or "as long as you get 2, you've got a prima face case."

You disagree, but the facts of Jung don't support that interpretation. When dealing with an ambiguous statute like 132 (that need "interpretation"), you have to look at the facts of the cases interpreting it. You are interpreting Jung as presenting some "broadly worded rule." However, it is not. It is just referring back to that ambiguous 132. Thus, your "broadly worded rule" is ambiguous.

When interpreting 132 … saying "you look to the plain language of 132" is ABSOLUTELY USELESS.

Ultimately, Jung is a yawner in my book and a bad appeal on the part of IV to take. The Examiner's work product was much better than most. Sure it would have been nice to have the prima facie case be a "98" but there are much better cases to take (e.g., citing a single paragraph in a single reference for 20 claims).

We just disagree about how ambiguous 132 is. I agree that it has some ambiguities, like virtually all English language. But I don't think that it's so ambiguous that it sets the same standard as Spada, Oetiker, etc.

In Oetiker, Newman said there was no prima facie case because 1. the reference was non-analogous and 2. the examiner used hindsight. Those are simply not the kinds of reasons that would prevent a prima facie case under section 132. By the plain language of 132, if the Examiner provides reasons (good or bad) and references/information, so that you can decide whether to continue, then the statute is satisfied. The Examiner in Oetiker satisfied that standard. They are simply two different standards.

On another note: you like to emphasize that Jung established what the Examiner didn't have to do. On your scale from 1-100, Jung said that the Examiner didn't have to do a 99.

But that is not *all* that Jung said. Jung's primary holding is that satisfying 132 is all the Examiner has to do. Logically, these are very distinct claims.

"Jung doesn't say "you only need 10" or "as long as you get 2, you've got a prima face case.""

Yes, it does say that. We can bicker about what number it is on your imaginary scale (10, 2, 25). But it absolutely says that all you have to do is satisfy 132, and 132 is a relatively low bar.

In fact, we need to distinguish two different scales. Look again at Oetiker. In Oetiker, there was no prima facie case because the reference was non-analogous, and because the examiner used hindsight. Those are both measures of how good the merits of the rejection is.

In contrast, Jung and 132 are about how well the Examiner explains his position - regardless of whether the position is correct. Look at 132 - it has nothing to say about whether the Examiner is right or wrong, about whether the reference is analogous or not, about whether the Examiner uses hindsight impermissibly. Those are simply not the kinds of reasons that would defeat a prima facie case according to Jung.

In view of the above, we're really talking about two different scales. There is the merit-based, substantive scale that Spada, Oetiker, and structural-similarity cases use. Then there is the "how well did the Examiner explain his position, regardless of whether the Examiner is right" scale of Jung. These scales are orthogonal to each other, they don't really have anything to do with each other. And, on the second scale according to Jung, the Examiner doesn't have to do a whole lot of anything.

"But it absolutely says that all you have to do is satisfy 132, and 132 is a relatively low bar."

I entirely disagree that 132 is a low bar. There is a lot of information needed to be provided by the Examiner that "is useful in judging of the propriety of continuing the prosecution of his application."

If I cannot judge the propriety of continuing the prosecution of the application based upon insufficient analysis (i.e., information) provided by the Examiner, then I'm going to argue that the Examiner did not meet 132. What Jung says is that I cannot have a claim construction for every limitation. However, I can argue that the rejection is so uninformative that it prevents me from recognize and seeking to counter the grounds for rejection.

If the grounds of rejection requires a claim construction for a particular term, and the Examiner has neither provided it nor explained where the limitation is shown in the art, then I'm argue failure to establish a prima facie case. If the Examiner cites column 2, line 5 through column 5, line 67, I'm going to argue that this isn't enough either

BTW: I suggest you read In re Glatt:http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1141.pdf

Focus on the paragraph spanning pages 8 and 9. There … they note that the Board's findings that reference A teaches X were unsupported by substantial evidence. Hence, reference A does not teach X and "the Board has failed to make a proper prima facie case of obviousness."

Remember when you wrote:"The Examiner could say that the claim is rejected because unicorns danced over the rainbow. (Yes, I'm exaggerating, but just to make a point.) As long as the Applicant understands the Examiner's reasoning - no matter how incorrect the reasoning is - then Jung is satisfied."

My response was:"Under Zurko, the Patent Office's findings of fact are reviewed for substantial evidence. You[r] 'unicorns danced over the rainbow' findings would not be considered based upon substantial evidence. Moreover, the finding of "unicorns danced over the rainbow" would be considered "so informative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."I guess the only thing I forgot to do was cite In re Glatt.

BTW – I do appreciate the conversation. It made me do the research to find the case that shoots a big hole in your arguments.

" In contrast, Jung and 132 are about how well the Examiner explains his position - regardless of whether the position is correct."Wrong … See In re Glatt. The Board explained their position but since it wasn't supported by substantial evidence, no prima facie case.

Regardless of what you think of the law, my position produces the correct result. The Examiner should not be able to MSU (the first word is "make," the third word is "up," the middle word is flexible) – no matter how convincing the Examiner's argument sounds – and be able to shift the burden over to Applicant. This would be the giant loophole by which the Patent Office could, with ZERO evidence, shift the burden to Applicant. Well … that loophole doesn't exist.

If a prima face case requires elements A, B, C, D, E, and F, the Examiner needs to present findings of fact, supported by substantial evidence, for all them. Then the burden shifts. Once the burden shifts, Applicants can present rebuttal evidence for each of those elements. Once the rebuttal evidence has been presented, the USPTO must prevail by preponderance of the evidence when all the evidence is weighed. This is the way it is and this is the way it should be. Jung does not change this.

"Wrong … See In re Glatt. The Board explained their position but since it wasn't supported by substantial evidence, no prima facie case."

Why are you citing Glatt, when we are arguing about the meaning of Jung and 132. Glatt does not mention either Jung or 132. So it has nothing to say about them.

Remember, my whole point in this thread has been that the Jung/132 rule is inconsistent with CAFC case law. So, if you go out and find a case that is inconsistent with my interpretation of Jung/132 - you haven't refuted me. You're helping make my point for me. Of course, Glatt can be inconsistent with Jung/132. So is Spada, so is Oetiker. My whole point in this thread is that CAFC case law on the PF case is ALL OVER THE MAP.

BTW look at who is on the panel in Glatt? NEWMAN. I've argued that Newman uses a different standard for the prima facie case than Jung/132 this entire thread. So it is no surprise (and certain no harm to my position) that Glatt isn't consistent with my interpretation of Jung/132.

"The Examiner should not be able to MSU (the first word is "make," the third word is "up," the middle word is flexible) – no matter how convincing the Examiner's argument sounds – and be able to shift the burden over to Applicant. This would be the giant loophole by which the Patent Office could, with ZERO evidence, shift the burden to Applicant. Well … that loophole doesn't exist."

As I said above, don't shoot the messenger. Do you think that I think Examiners should be able to MSU? Do you think I'm happy with the outcome in Jung? Of course not. I wrote (and almost filed) an entire amicus brief in support of petition for rehearing en banc in Jung.

(BTW, I really enjoy the convo too, which is I why I keep engaging.)

There are several background assumptions that are motivating your disagreement here. I'm going to make them explicit, so you can better understand why I don't share them.

1. "Kip's interpretation of Jung/132 is bad policy, and so that shouldn't the proper interpretation." Don't shoot the messenger. Whether the interpretation produces bad policy has very little to do with whether it is the correct policy. Courts make bad policy all the time.

2. "132 is so ambiguous that it is almost opaque. Therefore, we can fill it in with other case law." The problem here is that the plain language of 132 is not as opaque as you suggest. Also, the entire thrust of Jung was to reject Stern Kessler's argument that the Examiner had not satisfied the Oetiker, Piasecki, etc. standard. The Jung court rejected that argument by phrasing the entire test in terms of 132, not earlier case law. Jung basically converted the prima facie test from a common law one to a statutory one.

3. "As a default assumption, we should assume that CAFC case law is consistent and harmonious, esp. if this produces better policy." You don't quite say this, but I get a vague sense that something like this is motivating your view. The problem here (in addition to point 1 above) is that CAFC case law diverges all the time. That's why the CAFC has the en banc rehearing mechanism. You have to realize that the judges of the CAFC have sometimes radically different attitudes and beliefs about patents, their likelihood of validity, their place in the economy, etc. Newman herself is a famous outlier, writing (I believe) more dissents than any other judge on the CAFC. Instead of expecting the CAFC to be consistent, we can often expect it to be inconsistent. We should expect Newman, defender-of-patents, to set a more patentee-friendly standard in Oetiker, and for Dyk (on Jung panel) to try to lower that standard. That expectation reflects the reality that those two judges have very different attitudes and beliefs about patents. And, although CAFC panels are *supposed* to perfectly follow earlier panel decisions, they are human and often fail to do that.

"Why are you citing Glatt, when we are arguing about the meaning of Jung and 132. Glatt does not mention either Jung or 132."Are you daft? We are arguing about the prima facie case. You are citing Jung for the proposition that if the Examiner sneezes and accidentally gets some snot on the paper, it is sufficient to establish a prima face case. Glatt speaks to what is enough to establish a prima facie case – good reasoning is NOT ENOUGH. You need to back your assertions up with substantial evidence … which is the genesis of these arguments.

"Remember, my whole point in this thread has been that the Jung/132 rule is inconsistent with CAFC case law."Only when YOU read it. Everybody else (except 6 – and he doesn't count) reads Jung as just prohibiting a very high standard. BTW … I skipped out of the debate midway for awhile so there were other people arguing my side as well. Your recognition that YOUR reading of Jung is inconsistent with the other case law should have been a big, flashing warning sign that your interpretation is not correct.

"CAFC case law on the PF case is ALL OVER THE MAP"Only when you interpret Jung beyond its facts. The facts of Jung does not justify your interpretation. If the facts of Jung justified your interpretation, then you would be correct – the case law is all over the map.

You read too much into Jung and then state that the case law is all over the map … surprise, surprise. I have no problem harmonizing these cases, and I very much suspect that the Federal Circuit will have no problem either.

"As I said above, don't shoot the messenger."I'm not shooting the messenger … I'm saying that the messenger has garbled the message.

"Do you think I'm happy with the outcome in Jung? Of course not. I wrote (and almost filed) an entire amicus brief in support of petition for rehearing en banc in Jung."I thought it was a dumb case to bring to the Federal Circuit, however, what the Appellant was asking for was above and beyond what even I could reasonably expect from the USPTO (and I expect a lot). As I said originally, it is easy to distinguish Jung on its facts – BTW, that's what any future panel on the Federal Circuit will do.

"Jung basically converted the prima facie test from a common law one to a statutory one"No … I read nothing in Jung about discarding old tests and inserting a new test. If Jung didn't explicitly state it, it didn't happen – particularly if such a holding would overrule prior precedent.

Future panels of the Federal Circuit WILL harmonize Jung into the rest of their jurisprudence as to the prima facie case. They'll do it by limiting Jung on its facts. They'll state that the prior precedent regarding the prima facie case always contemplated "the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application." As such, they will conclude, the prior precedent is not inconsistent with 35 USC 132. Case closed … easy as pie.

"Are you daft? We are arguing about the prima facie case. You are citing Jung for the proposition that if the Examiner sneezes and accidentally gets some snot on the paper, it is sufficient to establish a prima face case. Glatt speaks to what is enough to establish a prima facie case – good reasoning is NOT ENOUGH."

Give me a break. Whenever case law is inconsistent, you can always selectively pick cases that support one side. That doesn't show that the case law is consistent. It shows that you found one case on one side. Just because Glatt says X, doesn't mean that Jung also said X. You're assuming that CAFC case law is consistent - but it often isn't. This is basic legal reasoning (are *you* daft?).

"Jung as just prohibiting a very high standard."

You're exclusively focusing on one major holding in Jung. But there were (at least) two major holdings:

A. The Examiner does not have to make an on-the-record claim construction for every elementB. All the Examiner has to do is satisfy section 132.

You can hammer your point about A all day long - but you're still ignoring B. Jung defined the prima facie case test in terms of 132. Without reference to Spada, Oetiker, Piasecki, or anything else.

Now, it's conceptually possible that the statutory language of 132 reflects, exactly, the same standard set forth in Spada, Oetiker, and all the earlier case law. But you can't just *assume* that it does. And, in fact, when you look at the language of 132, it is very broadly worded. Hindsight, or non-analogous art, those kinds of substantive arguments would not prevent the Examiner from satisfying 132. So there is at least a strong argument that these are two different standards.

You can't assume that they are the same standard, just because you find the earlier case law convenient. Sterne Kessler thought the earlier case law was convenient too - that's why it based its entire argument on the earlier case law, and lost, getting hit in the face with the plain language of the statute.

"facts of Jung"Jung is not limited to its facts, even if you wish it was. The court in Jung announced that all the Examiner has to do is satisfy 132. That's all the Examiner has to do in every case, not just in Jung. That's how legal precedent works. We've gone over this before.

"BTW, that's what any future panel on the Federal Circuit will do."

Oh really? Do you have a crystal ball? I remember before Thereasense, everyone thought that the CAFC wouldn't adopt a fraud-based standard for IC. Then the CAFC did exactly that. You don't know what the CAFC will do.

The CAFC already cites Jung against applicants in cases with very different facts. The CAFC cited Jung against applicants In re Hillis (2012), a case about enablement. The CAFC also cited Jung against applicants in In Re Antor Media (2012), a case about whether a prior art reference is enabled. These fact patterns are very different than the facts in Jung. So your crystal ball is already broken.

"If Jung didn't explicitly state it, it didn't happen – particularly if such a holding would overrule prior precedent."

"You can hammer your point about A all day long - but you're still ignoring B"

Hardly, we've gone over point B time and time and time and time again. I keep asking you to explain, in plain language what 132 requires and you say "it requires what it says it requires" (i.e., you have no helpful answer). I can read all the Federal Circuit jurisprudence on this issue consistently by stating that all of the previous cases discussing the prima facie case were merely expounding upon the requirements in 132 … which has been on the books for decades and decades. Unless you can show me case law that says 132 requires less than what is found in these other Federal Circuit cases you have no inconsistency.

"Now, it's conceptually possible that the statutory language of 132 reflects, exactly, the same standard set forth in Spada, Oetiker, and all the earlier case law."Bingo … we have a winner. The Federal Circuit is not going to ditch all of its previous jurisprudence because of Jung. It is not an en banc decision and the facts don't require the expansive interpretation you are giving it. Jung will get folded up into the rest of the case law and will be distinguishable … on its facts.

"Hindsight, or non-analogous art, those kinds of substantive arguments would not prevent the Examiner from satisfying 132"Wrong. Establishing obviousness and establishing analogous prior art REQUIRES findings of fact. An applicant cannot judge the propriety of continuing the prosecution of this application unless the Examiner at least supplies some substantial evidence to support these assertions. 132 does not permit the Examiner to make s__t up (MSU) but that his how you are interpreting it. I'm sorry … but that line of reasoning isn't going to fly.

"The court in Jung announced that all the Examiner has to do is satisfy 132"Except you cannot tell me what that means beyond "it means what it says it means." The next time 132 gets invoked, the Federal Circuit is going to ask the same question … "What does 132 require?" The most satisfactory answer they'll get … and the one they'll go with is "it means what the Federal Circuit has required for a prima facie case the last 30 years"

"You don't know what the CAFC will do."Sure I do, and I certainly know better than you. You are predicting that the CAFC will interpret Jung to complete eviscerate all of their other case law on the prima facie case – I'm saying … "BS … that isn't happening."

"The CAFC already cites Jung against applicants in cases with very different facts. The CAFC cited Jung against applicants In re Hillis (2012), a case about enablement. The CAFC also cited Jung against applicants in In Re Antor Media (2012)"Man … did you read these cases? I doubt it. In Hillis, they cited the non-specific language in Jung about proper notification of the shortcomings and then turns to In re Wright as to the specifics. As such, they gave a perfunctory nod to Jung while relying upon older case law as to the specifics – exactly what I thought they would do. Antor Media gives a little more lip service to Jung but relies upon another case to addresses the raised issue (i.e., whether a prior art reference is enabling).

One of the citations from Jung within Antor Media is "(“[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.”). Sufficiently articulate and informative manner?? WTF is that? I'm sorry, if you are looking to Jung to hail some new outlook as to what the prima facie case requires, that language isn't going to cut it.

"You say this as if CAFC case law never implicitly diverged over time."Until you show me the divergence, that point is moot.

"Hardly, we've gone over point B time and time and time and time again. I keep asking you to explain, in plain language what 132 requires and you say "it requires what it says it requires" (i.e., you have no helpful answer)."

As I said before, we just disagree about how ambiguous 132 is.

Imagine if I said that a square requires four sides at right angles. You could come back and say, "oh, but what does it mean to have 4 sides?" You could demand a further, narrower test for a square. If I didn't give you one, then you would say that the "four sides" test is meaningless. But you would be wrong.

Remember, I've given you answers for every case that you sent me. I have no difficulty applying 132. Give me a fact pattern, I'll tell you if 132 is satisfied. If it's a close/border case, then I'll say that too.

Your problem with 132 isn't that it's ambiguous - it's that it's clear, but you don't like what it clearly says. That's why you keep complaining that, if I'm right, then the Examiner can get away with X. But notice: "If you're right, then the Examiner can do X, and I don't like X" is *not* an argument against my interpretation. It's simply an observation that one CAFC holding results in policy that you find inconvenient.

" It is not an en banc decision and the facts don't require the expansive interpretation you are giving it. Jung will get folded up into the rest of the case law and will be distinguishable … on its facts."

That's one possibility. Another possibility (which I think is more likely) is that we'll simply see a drift in the case law. And that drift will drift toward an inventor-unfriendly standard, which sets a low bar for the prima facie case. Whenever Dyk or any other judges sees an inventor they don't like, they will be able to apply Jung and 132 against them - and they will do so in ways that Newman (author of Spada, Oetiker, and Piasecki) would not.

Now, you don't have a crystal ball, and neither do I, so we can be sure what will happen. So we can't be sure that the CAFC will harmonize Jung and earlier case law to prevent Examiners from doing what you find inconvenient.

"You are predicting that the CAFC will interpret Jung to complete eviscerate all of their other case law on the prima facie case – I'm saying … "BS … that isn't happening."

No. I am not making any predictions about what the CAFC will do. I acknowledge that the CAFC might interpret Jung narrowly, as you suggest, to protect future inventors. But it's entirely possible that the CAFC won't do that, and that Jung will mark the beginning of eroding procedural rights based on the prima facie case.

What I have said is that Jung and earlier case law are inconsistent. To do the right thing, the CAFC should resolve that inconsistency en banc. Or disavow Jung in a future precedential decision. But there is no guarantee that the CAFC will do that, that the CAFC will do the right thing. So I can't predict what they will do.

" As such, they gave a perfunctory nod to Jung while relying upon older case law as to the specifics – exactly what I thought they would do. Antor Media gives a little more lip service to Jung but relies upon another case to addresses the raised issue (i.e., whether a prior art reference is enabling)."

No, that's not "exactly what I thought they would do." You've said that they would limit Jung to its facts. Here, they cited Jung against applicants, twice, in cases with very different facts. The fact that the citation was "perfunctory" (if true) is irrelevant - the applicant still got kicked in the teeth by that "perfunctory" citation. The fact the CAFC cites additional cases is also irrelevant. You predicted X (distinguish Jung on its facts); X didn't happen. You were wrong. You have no crystal ball. You don't like what Jung plainly says. You can stick your head in the sand all you want; you can make hopeful predictions that the CAFC will limit Jung's holding; none of that will change the reality of what really happened. Wake up.

"it's entirely possible that the CAFC won't do that, and that Jung will mark the beginning of eroding procedural rights based on the prima facie case"

It's entirely possible that Judge Newman will meet a patent she doesn't like ... but I'm not betting on it.

"What I have said is that Jung and earlier case law are inconsistent."Only when you interpret inconsistently ... I can harmonize them.

"You've said that they would limit Jung to its facts."Exactly, the facts of Jung didn't apply so they found a better case. The probem with your analysis is that the facts of Jung lend themselves to few issues ... and less issues that I care about.

"Here, they cited Jung against applicants, twice, in cases with very different facts."So what ... they haven't expanded Jung beyond its facts ... which is the important part.

BTW -- I'm not sticking my head in the sand ... it is you that is making a mountain out of a mole hill.

About Me

I'm a registered patent attorney, and a partner at the law firm of Cantor Colburn LLP. My practice focuses on patent prosecution, primarily in the technology areas of networking, data communications, operating systems, and application software.

Disclaimer

Disclaimer: The opinions expressed on this Blog/Web Site ("Blog") are those of the author and do not represent the views of her law firm, colleagues, or clients. The Blog is not legal advice and is offered for educational purposes only. The Blog does not create any attorney-client relationship. Comments posted on the Blog are not treated as confidential; therefore, do not post sensitive information.